*1 On July 27, 2021, defendants Baby Trend, Inc., Denny Tsai, and Betty Tsai filed a joint stipulation (“JS”) regarding their motion to compel plaintiff Wonderland Nurserygoods Co., Ltd. to provide further responses to certain discovery requests. Docket No. 215. Defendants' arguments are supported by the declaration of their counsel Kendall C. Griffin (“Griffin Decl.”) and exhibits 1 to 15. Plaintiff's arguments are supported by the declaration of its counsel Michael J. Song (“Song Decl.”) and exhibits A to U. Defendants filed a supplemental memorandum in support of their arguments on August 10, 2021. Docket No. 220.

The court considered the papers submitted, except for defendants' untimely supplemental memorandum, and held a hearing on August 17, 2021. The court now grants in part and denies in part defendants' motion to compel.

Plaintiff designs, engineers, and produces baby products, including strollers, cribs, playards, car seats, and high chairs. Compl. ¶ 2. Plaintiff and related entities own more than 130 U.S. patents, including U.S. Patent Number RE43,919 entitled “Baby Crib.” Id. ¶¶ 3, 14. Plaintiff alleges several of its products are protected by the '919 patent, including several playards and sleep stations. See id. ¶ 19.

On June 6, 2014, plaintiff filed a Complaint accusing defendants of willful infringement and inducement of infringement of the '919 patent. See generally id. Plaintiff claims defendant Baby Trend sells a “Deluxe Playard” and other similar products that infringe the '919 patent. See id. ¶ 17. Plaintiff argues defendants know they are infringing its patent because plaintiff was previously awarded judgment against Baby Trend's supplier of playards in China for infringement of a Chinese patent to which the '919 patent claims priority. See id. ¶ 15. Plaintiff seeks injunctive relief, compensatory and increased damages, and costs. See id., Prayer for Relief.

On defendants' motion, the court stayed the case on April 13, 2015 pending inter partes review of the '919 patent. On September 6, 2019, the court lifted the stay upon conclusion of two rounds of inter partes review proceedings. The parties filed a Joint Claim Construction Statement on May 1, 2020, followed by opening claim construction briefs on May 15, 2020. The court held a claim construction hearing (Markman hearing) on December 8, 2020 and issued a claim construction order on December 30, 2020.

Defendants move to compel supplemental responses to their interrogatory numbers 3, 9, 11, and 15-17 and requests for production (“RFP”) numbers 74-77 and 111-113. JS at i. Before addressing the merits of defendants' motion, the court notes that their supplemental memorandum was not timely under Local Rule 37-2.3. That rule requires parties to file supplemental memoranda no later than 14 days before the scheduled hearing date. The hearing on this motion was scheduled for and held on August 17, 2021. Defendants' supplemental memorandum, filed August 10, 2021 was one week late. Accordingly, the court will not consider the supplemental memorandum in resolving the motion.

A. Relevance of the '949 Patent

*2 Interrogatory number 15 asks plaintiff to “[i]dentify by name, model number, and Any other identifying indicia Any Wonderland playard products that You contend practice Any claim of the '949 Patent.” JS at 45. Other requests also concern the '949 patent.

Defendants argue the discovery they seek concerning the '949 patent is relevant to damages, including lost profits and a reasonable royalty, and secondary considerations of non-obviousness. JS at 46-47. They allege the '949 patent claims an alternative design for an exposed-tube playard that plaintiff conceived of and reduced to practice at the same time as the '919 patent. JS at 46.

Plaintiff argues the '949 patent is irrelevant because it is not accusing defendants of infringing that patent in this case. JS at 49. Plaintiff further contends that whether a product practices the '949 patent does not mean it does not also practice the '919 patent or vice versa. See id. As for damages, plaintiff first notes it is not seeking lost profits. Id. Plaintiff also argues the '949 patent is irrelevant to calculating a reasonable royalty because it is not prior art to the '919 patent. See JS at 49-50.

Plaintiff is not (currently) claiming damages under a lost profits theory, so the '949 patent is presently irrelevant in that respect, although at the hearing plaintiff did not foreclose the possibility of reviving its pursuit of lost profits. In any event, the court may ultimately have to consider the '949 patent in evaluating the commercial success of the products at issue, which is relevant to both secondary considerations of non-obviousness and calculating a reasonable royalty. See Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17-18, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) (secondary considerations include “commercial success, long felt but unsolved needs, failure of others, etc.”); Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970) (to establish a reasonable royalty, courts may consider “[t]he established profitability of the product made under the patent; its commercial success; and its current popularity”).

As some courts have recognized, “many products embody dozens of patents or features and ... their success or failure cannot solely be attributed to any particular one.” Rambus Inc. v. Hynix Semiconductor Inc., 254 F.R.D. 597, 602 (N.D. Cal. 2008). Plaintiff concedes its products may practice both the '919 and '949 patents. Thus, defendants are entitled to explore the extent to which the commercial success of the products may be due to their '949 features. That plaintiff chose to enforce only the '919 patent in this action is inconsequential. A product that practices both patents does not stop practicing one of them simply by virtue of plaintiff's litigation strategy.

Defendants fail to show that products that practice only the '949 patent, and not the '919 patent at the center of this case, are relevant, apart from the issue of profits, but again, that may yet be an issue. In any event, although plaintiff argues the burden to identify products that practice the '949 patent is disproportionate, there should in fact be little burden to plaintiff to identify its own products that practice the patent, as it has already done for the '919 patent. Accordingly, as set forth below, the court will order plaintiff to supplement its response to interrogatory number 15 to identify products it contends practice any claim of the '949 patent.

B. Interrogatory Numbers 3, 15, and 16

*3 Interrogatory number 3 asks for several pieces of information regarding the '919 patent, including, among other things, uses, sales, and descriptions. See JS at 10. As previously noted, interrogatory number 15 asks plaintiff to identify all of its products that allegedly practice the '949 patent. See JS at 17. Interrogatory number 16 asks plaintiff to identify all of its non-exposed-tube playards sold, offered for sale, or imported into the United States after January 1, 2000. See JS at 18. Non-exposed-tube playards have fabric, mesh, or other enclosures covering the vertical corner tubes of the playard. See JS at 29.

Aside from the relevance of the '949 patent, the dispute over interrogatory numbers 3, 15, and 16 stems from the alleged incompleteness of plaintiff's financial spreadsheets (see Griffin Decl., Exs. 14-15). Defendants claim the spreadsheets are incomprehensible because the only identifying information included are internal model numbers, category names, and platform names. JS at 19. This information does not indicate which model numbers are non-exposed-tube products or whether they practice claims of the '919 or '949 patents. JS at 19-20. Defendants also claim WOND_0080866 only provides data for two out of the seven playard product lines that plaintiff contends practice the '919 patent. JS at 21. And they argue it is unclear how WOND_0080865 is responsive to any of defendants' requests because the products discussed in that spreadsheet are not identified at all. See id.

In response to interrogatory numbers 3, 15, and 16, defendants ask plaintiff to explain how its June 1, 2021 production “unlocks” the financial spreadsheets and to specify, for each relevant product/model number: (1) Whether it practices the '919 or '949 patent; and (2) whether it is a non-exposed-tube playard. See JS at 23. It appears defendants want plaintiff to produce financial spreadsheets that have the later two pieces of information included for each entry/row. See id. Defendants argue plaintiff is in the best position to identify its own products and specify which ones practice which patents. JS at 20. If plaintiff fails to provide the requested information, defendants argue it should be precluded from introducing any evidence or arguments that are based or rely on that information. See JS at 23.

Plaintiff raises two main arguments in response. First, it again argues the requests regarding the '949 patent are not relevant to any issue in this case. JS at 28. Second, plaintiff argues defendants have all of the information they need to organize the sales data in the financial spreadsheets by type of product (i.e., exposed versus non-exposed-tube playards) and patent exercised. See JS at 24. Thus, plaintiff should not be required to create documents it does not maintain in the ordinary course of business when the burden to do so would be the same for defendants. See id.

Defendants' request for a “guide” to decode the financial spreadsheets is reasonable. But their apparent request for plaintiff to essentially add columns for patent practiced and tube exposure type is not. The court cannot compel plaintiff under Rule 34 to create new documents it does not keep in the ordinary course of business. See Cholakyan v. Mercedes-Benz USA, LLC, 2011 WL 7575379, at *20 (C.D. Cal. Dec. 20, 2011) (citation omitted). At the hearing, defendants took issue with whether it is improper to require a party to add to dynamic data in this way, but agreed that if plaintiff produces a table with the needed information, that would be sufficient.

In terms of what constitutes a proper guide to “unlock” the financial spreadsheets, the court orders plaintiff to provide the following information by September 1, 2021. First, as already discussed, in response to interrogatory number 15, plaintiff must identify by name, model number, and any other identifying indicia all Wonderland playards that practice any claim of the '949 patent. Second, defendants claim plaintiff has not supplemented its identification of products that allegedly practice the '919 patent since February 2020. See JS at 19. Plaintiff must supplement its response to interrogatory number 3, if necessary, to ensure it has identified all products that allegedly practice the '919 patent.

*4 As for interrogatory number 16, plaintiff refuses to identify which playards have non-exposed tubes because it argues defendants can ascertain that information from photographs it has already produced. See JS at 24-25. The court is not persuaded by this argument. Defendants' request is no different from their requests to identify which products practice which patents. Plaintiff has not shown it would be unduly burdensome for plaintiff to identify, in response to an interrogatory, which playards have non-exposed tubes. Although it is possible defendants could ascertain this from the photos produced, it may not be entirely clear in every case, and defendants are entitled to know which playards plaintiff contends have non-exposed tubes so there is no misunderstanding. Accordingly, in response to interrogatory number 16, plaintiff must identify by September 1, 2021 each relevant product/model number of playards with non-exposed tubes.

C. Interrogatory Number 17 and RFP Numbers 74-77 and 111-113

Interrogatory number 17 seeks sales information – including number of units sold, total sales, costs, location of sales, and profit margins – for all of plaintiff's products that allegedly practice the '949 patent and for non-exposed-tube playards sold, offered for sale, or imported into the United States after January 1, 2000. See JS at 17-18, 29.

RFP number 74 seeks all of plaintiff's annual reports since 2000. JS at 30. RFP number 75 requests all of plaintiff's financial statements since 2000. JS at 31. RFP number 76 seeks all documents concerning accounting audits, reports, statements, and analyses of plaintiff since 2000. Id. RFP number 77 requests all documents regarding plaintiff's revenues and expenses for any product that allegedly practices the '919 patent. JS at 32.

RFP number 111 seeks sales data – including number of units sold, total sales, costs, location of sales, customers, and profit margins – for all non-exposed-tube playards after January 1, 2000 on a monthly basis. See id. RFP number 112 seeks the same data but for plaintiff's products that allegedly practice the '949 patent. See id. at 33. RFP number 113 requests the same data for plaintiff's products that allegedly practice the '919 patent. See JS at 34.

Despite the breadth of the discovery requests, the focus of the dispute appears to be plaintiff's cost data. See JS at 35. Based on defendants' arguments, it is unclear whether plaintiff has produced any such data. On one hand, they claim plaintiff's financial spreadsheets lack any cost data. See JS at 36, 38. But defendants also appear to state that plaintiff has produced cost data for some of the allegedly '919 patent-practicing products from 2011 to 2013. See JS at 37. They argue the cost data is relevant to, at least, determine a reasonable royalty using the factors identified in Georgia-Pacific. See id.

Plaintiff argues defendants have not demonstrated the relevance of the requested information or explained how any purported relevance outweighs the burden to collect and produce such data for the last 20 years. JS at 39. Plaintiff contends it is defendants' cost data, not plaintiff's, that is relevant to calculating a reasonable royalty. See JS at 39-42. Plaintiff argues that, at best, a licensor's profits may be relevant to examine what a licensee might possibly earn from sales of licensed products. See JS at 42. But plaintiff claims its profits are not representative of what defendants might possibly make because it sells playards to defendants' competitors (i.e., Graco and Nuna) not to the public directly like defendants do. See id.

Plaintiff also argues that, even if the court finds its cost data is discoverable, the temporal scope of defendants' requests is overbroad. See JS at 43. Since it alleges defendants' infringement began on January 15, 2013, it argues the 2011-2013 cost data it produced would be the most relevant to the determination of a reasonable royalty. See id. Plaintiff claims pre-2010 cost data would be extremely burdensome to obtain because it is stored on back up tapes. Id. The parties previously stipulated that “[a]bsent a showing of good cause, no party need restore any form of media upon which backup data is maintained in a party's normal or allowed processes, including but not limited to backup tapes.” Id.; docket No. 176 at 5.

*5 The Georgia-Pacific decision provides a clear and thorough explanation of the purpose behind reasonable royalty damages and how to calculate them. In essence, when a patentee successfully proves infringement, it may generally seek actual damages of (1) lost profits; (2) the amount of the infringer's profits that are attributable to the infringed features; or (3) an established royalty for the licensing of the infringed features. See Georgia-Pacific, 318 F. Supp. at 1121, 1127-28; Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S. 641, 646-48, 35 S. Ct. 221, 59 L. Ed. 398 (1915). However, the patentee may be unable to prove such actual damages due to, for example, a lack of evidence. In such cases, the patentee may instead recover damages in the form of a reasonable royalty, that is, the royalty that a willing licensor and licensee would have agreed upon had they actually negotiated a license to use the patented features. See Georgia-Pacific, 318 F. Supp. at 1121-23 (the reasonable royalty standard supposes a hypothetical “market place confrontation of the parties”); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009) (the hypothetical negotiation “attempts to ascertain the royalty upon which the parties would have agreed had they successfully negotiated an agreement just before infringement began” (citation omitted)).

Plaintiff's argument that cost data as a whole is irrelevant is not well-taken since it is clearly contrary to the well-established consideration of the patentee's profits (and thus costs) in determining a reasonable royalty. As the Georgia-Pacific court made clear, the reasonable royalty standard requires “consideration not only of the amount that a willing licensee would have paid for the patent license but also of the amount that a willing licensor would have accepted.” 318 F. Supp. at 1121 (emphasis added). To determine that figure, courts consider, among other things, “the anticipated amount of profits that the prospective licensor reasonably thinks [it] would lose as a result of licensing the patent as compared to the anticipated royalty income” and “the commercial past performance of the invention in terms of public acceptance and profits.” See id. at 1121, 1123. Indeed, the Georgia-Pacific court spent a considerable portion of its decision evaluating the profitability of the patented products sold by the patentee. See id. at 1127-29. The court reasoned that the amount of profit that the plaintiff was making and could reasonably expect to continue making by selling its patented products was “of major relevance to the determination of the amount of royalty that [plaintiff] would accept from [defendant]. Id. at 1127.

Accordingly, the court finds the requested cost data is relevant and must be produced. But the court agrees with plaintiff that the temporal scope of defendants' discovery requests is overbroad.

The hypothetical negotiation envisioned by the Georgia-Pacific standard takes place on the “eve of infringement.” LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 76 (Fed. Cir. 2012). In determining a reasonable royalty, the court must consider the profit that plaintiff was making, and that it reasonably anticipated it would continue to make, from the patented products on and before the alleged infringement began, not the amount of profits that plaintiff actually lost after that date. See Georgia-Pacific, 318 F. Supp. at 1127. “[I]n each case there should be only a single hypothetical negotiation date, not separate dates for separate acts of infringement ....” LaserDynamics, 694 F.3d at 76.

Defendants are requesting more than 20 years of cost data. They offer no reason at all entitling them to such an extended production of data from before January 15, 2013. They also offer no good cause to deviate from the terms of their stipulation regarding electronically stored information. The hypothetical negotiation here would have occurred just before January 15, 2013, the date on which the alleged infringement began. Thus, the court finds cost data dating back to January 1, 2011 is sufficient under the circumstances to calculate a reasonable royalty.

*6 As for post-2013 cost data, defendants argue they did not learn of the '919 patent until April 2014. That does not change the infringement date, and at best only justifies cost data up to April 2014. At the hearing, defendants argued that the reasonable royalty analysis may include information beyond the date of the hypothetical negotiation under the “book of wisdom” doctrine some courts have accepted. Such information might include the infringer's actual profits. See Aqua Shield v. Inter Pool Cover Team, 774 F.3d 766, 770 (Fed. Cir. 2014). There are limits on that doctrine, and it is unclear whether it will apply here. Furthermore, this is not an argument defendants developed in their motion papers. As such, the court sees no basis to order plaintiff to produce cost data after 2014.

For these reasons, the court orders plaintiff to supplement, by September 1, 2021, its discovery responses and production to ensure it has produced all cost data requested by interrogatory number 17 and RFP numbers 74-77 and 111-113 from January 1, 2011 to December 31, 2014. To the extent plaintiff is unsure what additional cost data is requested, the parties must promptly meet and confer to clarify this.

D. Interrogatory Number 9

Interrogatory number 9 asks plaintiff to describe in detail the complete factual and legal bases for seeking a permanent injunction in its Complaint. See JS at 51. Defendants ask plaintiff to include all allegations relevant to each of the four factors that courts consider to determine whether to grant such relief. See id. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S. Ct. 1837, 164 L. Ed. 2d 641 (2006)).

Plaintiff's response to interrogatory number 9 reads, in relevant part:

JS at 51-52.

A plaintiff seeking a permanent injunction must demonstrate:

MercExchange, 547 U.S. at 391.

Defendants argue plaintiff's response to interrogatory number 9 is conclusory and devoid of factual support. See JS at 53. First, defendants contend plaintiff has not provided sufficient facts showing it suffered an irreparable harm. Id. Specifically, plaintiff has not shown that allegedly infringing sales made by defendants would have been made by plaintiff and not other competitors. See id. Second, defendants argue plaintiff has not given a basis to establish that monetary damages would be insufficient to compensate for any alleged injuries. See id. For example, plaintiff has not offered any evidence of lost sales, a decrease in market share, or damage to brand recognition. See JS at 53-54. Third, defendants contend plaintiff has provided no legal or factual basis to establish that the balance of hardships weighs in its favor. See JS at 54. Fourth, defendants complain plaintiff did not address how a permanent injunction would impact the public interest. Id.

*7 Plaintiff responds it is not refusing to explain its position on its request for a permanent injunction, and that it plans to supplement its response as soon as practically possible. JS at 55. Plaintiff apparently needs more discovery to supplement, including evidence of market share. See id. Plaintiff complains that defendants have refused to provide relevant evidence of market share on the grounds of third-party privacy and trade secrets. See id. Plaintiff plans to file a motion to compel production of this evidence. See JS at 55-56. Plaintiff also plans to subpoena one of its customers, Graco, for market share information. See JS at 55.

Although contention interrogatories such as defendants' are not per se improper, courts generally defer complete responses until much or all discovery has been completed. See, e.g., In re Convergent Techs. Sec. Litig., 108 F.R.D. 328, 333 (N.D. Cal. 1985); Civolution B.V. v. Doremi Labs, Inc., 2015 WL 11072167, at *1 (C.D. Cal. June 11, 2015) (district courts have considerable discretion to “defer supplementing responses to contention interrogatories until theories of the case have ripened for trial”). On the other hand, a party may not delay responding to discovery with information already in its possession, custody, or control, simply because the other party has not yet fully responded to discovery. See Infanzon v. Allstate Ins. Co., 335 F.R.D. 305, 312 (C.D. Cal. 2020).

The court is not persuaded that plaintiff has made a good faith effort to respond to interrogatory number 9 to the extent it can given the information currently in its possession, custody, and control. Discovery closes in less than a month on September 1, 2021. See Docket No. 203. At the hearing, plaintiff agreed it could now supplement its response, particularly after defendants' additional production on August 10, 2021. Accordingly, plaintiff must supplement its response by September 1, 2021, subject to further amendment should defendants produce or plaintiff otherwise obtain additional relevant information.

E. Interrogatory Number 11

Interrogatory number 11 asks plaintiff to describe in detail its position on whether defendants have intervening rights under 35 U.S.C. § 252. See JS at 57. Defendants ask plaintiff to explain how each limitation of their asserted claims is substantially identical to any claim limitations of the '957 patent, the original patent. See id.

Plaintiff's response to interrogatory number 11 reads, in relevant part: “The '919 reissue patent reissued on January 15, 2013. Thus, statutory intervening rights do not apply to products made after January 15, 2013. Baby Trend is not entitled to equitable intervening rights either, at least because it is a willful infringer.” Id.

Defendants accused of infringing a reissued patent may raise the affirmative defense of intervening rights. John Bean Techs. Corp. v. Morris & Assocs., Inc., 988 F.3d 1334, 1337 (Fed. Cir. 2021) (citing 35 U.S.C. § 252). An intervening right is acquired whenever a party manufactures or sells an article, machine, or process “between the time of the grant of an original patent, which does not claim such article or machine or process, and the time of the filing of an application for a reissue that broadens the claims of the original patent.” 69 C.J.S. Patents § 327 (2021). Alleged infringers may not be liable for infringement of substantively and substantially altered claims in a reissued patent. John Bean, 988 F.3d at 1337. The rationale underlying the defense is that “the public has the right to use what is not specifically claimed in the original patent.” Id. at 1338 (cleaned up).

*8 The Patent Act provides for two types of intervening rights in the context of reissued patents:

69 C.J.S. § 327 (2021).

In determining whether to grant equitable intervening rights, courts consider six factors, including:

John Bean, 988 F.3d at 1338 (citation omitted).

Defendants argue plaintiff's response lacks sufficient factual allegations. See JS at 57-59. They claim to have already provided plaintiff the information it requested – sales data and purchase order records – to supplement its response. See JS at 58.

Plaintiff claims it is not refusing to explain its position on defendants' defense of equitable intervening rights. JS at 60. But it argues the relevant facts are primarily if not solely in defendants' possession. Id. Plaintiff alleges defendants have refused to provide basic discovery it needs to provide a complete response to the interrogatory. Id. Plaintiff requests an informal discovery conference to address defendants' refusal to provide that discovery on the basis of privilege. See JS at 63.

The court agrees with plaintiff that each of the John Bean factors involves evidence that would be in defendants' possession. Indeed, it is their burden to establish their affirmative defense. Linear Tech. Corp. v. Micrel, Inc., 524 F. Supp. 2d 1147, 1156 n.4 (N.D. Cal. 2005) (citing Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094, 1102 (Fed. Cir. 2001)).

Despite their unique knowledge of the factual bases for evaluating the John Bean factors, as of the briefing on this motion defendants had provided only a limited, conclusory explanation of their position on the applicability of the defense. Namely, in response to one of plaintiff's interrogatories, defendants gave the following explanation:

*9 JS at 64. Defendants cannot reasonably expect plaintiff to provide a complete response to their interrogatory without first adequately explaining their own position. At the hearing, however, defendants revealed more information regarding their position, and additional information was already provided in their recent production on or about August 10.

At this time, the court orders plaintiff to supplement its response to interrogatory number 11 by September 1, 2021, based on the information defendants have provided to date. Prior to September 1 – and promptly – the parties must meet and confer regarding plaintiff's concerns that there is additional information defendants should produce, and so that defendants may, for example, provide plaintiff with the Bates numbers of documents regarding the design and development of accused products, as discussed at the hearing. Until the parties have thoroughly met and conferred in light of defendants' recent production, a further discussion with the court would be premature.

If the parties are unable to resolve all their disputes after a thorough effort to meet and confer, they may contact the Magistrate Judge's courtroom deputy clerk to arrange a telephonic conference to attempt to resolve any disputes informally. They may also bring another formal discovery motion. But the court cautions the parties that given that fact discovery is currently set to close on September 1, 2021, unless that date is extended, any fact discovery motion filed now would be untimely.

For the foregoing reasons, the court grants in part and denies in part defendants' motion to compel (docket no. 215) as set forth above.