Opinion

1 2 3 4 5 6 7 8 9 10 UNITED STATES DISTRICT COURT 11 SOUTHERN DISTRICT OF CALIFORNIA 12 13 PERFORMANCE DESIGNED Case No.: 25-cv-01360-RBM-JLB PRODUCTS LLC, 14 ORDER GRANTING IN PART AND Plaintiff, 15 DENYING IN PART PLAINTIFF’S v. MOTION TO COMPEL RESPONSE 16 TO INTERROGATORY NO. 4 OKYN HOLDINGS, INC., 17 Defendant. [ECF No. 60] 18 19 Before the Court is Plaintiff and Counter-Defendant Performance Designed Products 20 LLC’s (“PDP”) Motion to Compel Response to Interrogatory No. 4 (“Motion”) (ECF No. 21 60), and Defendant and Counter-Claimant OKYN Holdings, Inc. d/b/a Nyko 22 Technologies’ (“Nyko”) Opposition (“Opposition”) (ECF No. 65). For the reasons set 23 forth below, PDP’s Motion is GRANTED in part and DENIED in part. 24 I. RELEVANT FACTUAL AND PROCEDURAL BACKGROUND 25 In May 2025, PDP filed suit against Nyko, seeking a declaration of non-infringement 26 of four patents (the “Asserted Patents”) held by Nyko. (ECF No. 1 at 5-10.) Nyko 27 counterclaimed that PDP’s Ultra Slim Charge System for PlayStation 4 infringes the 28 Asserted Patents. (ECF No. 6 at 12-26.) 1 Discovery commenced. Through Interrogatory No. 3, PDP asked Nyko to identify 2 each product allegedly marked in accordance with 35 U.S.C. § 287(a).1 (ECF No. 60-2 at 3 4.) PDP asserts that “[i]n its disclosures pursuant to Patent Local Rule 3.1(g) and in its 4 response to PDP’s Interrogatory No. 3, Nyko contends that twelve of its products practice 5 the claimed invention.” (ECF No. 60 at 2.)2 PDP’s Interrogatory No. 4 requested the 6 following: 7 For each product identified in Nyko’s response to PDP’s Interrogatory No. 3, and any supplemental responses thereto, 8 describe in detail the factual bases for Your contention that the 9 product practices one or more claims of each Nyko Patent, including by providing a claim chart identifying where each 10 element of each practiced claim is found in the product. 11 12 (ECF No. 60-3 at 4.) 13 Nyko responded to Interrogatory No. 4 under Federal Rule of Civil Procedure 33(d) 14 by listing product manuals, Nyko’s website, and product images. (ECF No. 60 at 2; ECF 15 No. 60-3 at 5.) The parties participated in two informal discovery conferences with the 16 Court regarding Nyko’s response to Interrogatory No. 4. (ECF No. 60 at 3; ECF Nos. 50, 17 55.) The discovery dispute was not resolved, and the Court authorized the parties to brief 18 // 19 20 21 1 The marking of a product as patented generally constitutes a prerequisite to the availability of damages to a patentee in an action for infringement. See 35 U.S.C. § 287(a). 22 23 2 In its Opposition, Nyko states that preparing the claim charts would involve “at least 12 products and 4 claims.” (ECF No. 65 at 2.) Nyko identifies 12 products in its 24 Disclosure of Asserted Claims and Infringement Contentions pursuant to Patent Local Rule 25 3.1. (ECF No. 60-5 at 6-7.) However, in its response to Interrogatory No. 3 (Exhibit 1 to PDP’s Motion), Nyko identified only 11 of its products as compliant with the marking 26 requirement set forth in 35 U.S.C. § 287(a). (ECF No. 60-2 at 5.) The product excluded 27 from the response to Interrogatory No. 3 is apparently the “Charge Base 2 for Playstation®3.” (ECF No. 60-5 at 6.) 28 1 the matter. (ECF No. 56.) PDP filed the instant Motion. Nyko opposed the Motion. 2 (ECF No. 65.) 3 On April 28, 2026, the Honorable Ruth Bermudez Montenegro held a Claim 4 Construction Hearing. (ECF Nos. 60, 62.) On August 4, 2026, Judge Montenegro issued 5 a Claim Construction Order. (ECF No. 79.) The Parties agreed to constructions for six 6 claim terms, and the Court construed the following nine disputed claim terms: “docking 7 bay;” “recess;” “mate/mated;” “plurality;” “electrical contact(s)”/“electrical lead(s);” 8 “adapter;” “video game controller;” “intervening portion;” and “connector.” (Id. at 3.) 9 II. PARTIES’ ARGUMENTS 10 PDP argues that the Court should grant its Motion and order Nyko to provide the 11 requested claim charts, because the information sought by Interrogatory No. 4 regarding 12 Nyko’s assertion that the products practice one or more claims of each Nyko patent is 13 relevant to questions of infringement, invalidity, marking, profits, and damages. (ECF 14 No. 60 at 4–5 (citing Apple Inc. v. Wi-LAN Inc., No. 14cv2235-DMS (BLM), 2018 WL 15 733740, at *2-*3 (S.D. Cal. Feb. 6, 2018); Sonix Tech. Co. Ltd. v. Yoshida, No. No. 16 12cv380–CAB (DHB), 2014 WL 11878354, at *3 (S.D. Cal. Dec. 5, 2014)).) Further, PDP 17 contends that “the claim charts requested by Interrogatory No. 4 are the type of information 18 that parties routinely provide in patent cases.” (Id. at 6.) PDP also asserts that “the basis 19 for a patentee’s contention regarding why its own products practice the Asserted Patents is 20 relevant and proportional information when the patentee intends to rely on those products.” 21 (Id. at 3–4.) 22 PDP maintains that preparing the claim charts would not pose an undue burden, as 23 Nyko already formulated the factual basis for its contention by evaluating the products at 24 issue in preparing its disclosure pursuant to Patent Local Rule 3.1(g) and its response to 25 Interrogatory No. 3. (Id. at 6.) PDP reasons that preparing the requested claim charts 26 should not involve a significant expenditure of time by Nyko, as each of the Asserted 27 Patents shares an “identical specification” and “overlapping claim elements,” involving 28 common features such as adapters, leads, contacts, and recesses, while several of the 1 Asserted Patents also include a base, docking structure, and docking bay. (Id.) For 2 instance, PDP asserts that in its infringement contentions, Nyko “copied and pasted the 3 same elements of the Accused Product across multiple limitations for each Asserted 4 Patent.” (Id. (citing ECF No. 60-5 (Exhibit 4) at 4 at 10–11, 15–16, 19, 24, 29–30 (referring 5 to the same element of the Accused Product as meeting the variations of the “base” 6 limitation in each Asserted Patent); id. at 12, 16–17, 19–20, 23, 28 (referring to the same 7 element of the Accused Product as meeting the “connector” and “male DC port” limitations 8 in the Asserted Patents).) Regardless, PDP contends that the fact that preparing the 9 requested claim charts would necessitate an additional investment of time by Nyko does 10 not support undue burden. (Id. (citing Thomas v. Cate, 715 F. Supp. 2d 1012, 1033 (E.D. 11 Cal. 2010), order clarified, No. 1:05–cv–01198–LJO–JMD–HC, 2010 WL 797019 (E.D. 12 Cal. Mar. 5, 2010)).) 13 Acknowledging that the Local Rules for the Southern District of California do not 14 require the production of the requested claim charts, PDP nevertheless maintains the 15 absence of a specific requirement does not mean Nyko need not respond to its discovery 16 request. (Id. at 7 (citing PersonalWeb Techs., LLC v. Google Inc., No. C13–01317 EJD 17 (HRL), 2014 WL 4088201, at *5 (N.D. Cal. Aug. 19, 2014)).) Moreover, PDP contends 18 that “Nyko does not dispute that the information requested in Interrogatory No. 4 is relevant 19 to several issues, including marking, secondary considerations and lost profits.” (Id.) PDP 20 also asserts that requiring Nyko to respond to Interrogatory No. 4 only after PDP identifies 21 claim limitations that Nyko’s alleged patent-practicing products assertedly do not meet 22 improperly shifts the burden to PDP “to evaluate the patentee’s contention and guess at its 23 factual basis.” (Id.) PDP insists that whether a patentee’s products are actually patent- 24 practicing products is a “threshold issue.” (Id. at 8 (quoting Apple, 2018 WL 733740, at 25 *1).) 26 // 27 // 28 // 1 Nyko counters that it “has not conceded that [the requested] discovery is relevant” 2 and that “it is premature to determine relevance” at this stage. (ECF No. 65 at 2 n.1.)3 3 Further, Nyko contends that “PDP’s request for detailed claim mapping and claim charts 4 for at least 12 products and 4 claims is not proportional to the needs of this case[.]” (Id. at 5 2.) Nyko also asserts that PDP does not seek the “factual bases” for Nyko’s identification 6 of the patented products, but rather Nyko’s legal analysis on claim construction. (Id. at 4.) 7 Nyko contends that the images of pages from its website and user manuals provided 8 to PDP are sufficiently responsive to Interrogatory No. 4, as they illustrate how the 9 products operate and which components are included. (Id. at 5.) Further, Nyko notes that 10 it offered PDP the opportunity to inspect the patented products, but that PDP did not 11 respond. (Id.) Moreover, Nyko contends that because its “infringement claim charts 12 illustrate how [it] maps the asserted claims with PDP’s accused product,” these charts will 13 “guide PDP in evaluating Nyko’s patented products” due to the similarity between the 14 accused product and Nyko’s patented products. (Id. at 6.) Estimating that preparing 48 15 claim charts would consume approximately 96 to 144 hours of attorney time, Nyko insists 16 that producing claim charts for the 12 identified products would pose an undue burden by 17 requiring additional photographs, claim mapping, and analysis of claim coverage for each 18 element, followed by the process of “converting that detailed claim mapping into a claim 19 chart.” (Id. at 6–7 & 6 n.3.) Nyko also emphasizes that the Local Rules for the Southern 20 District of California do not require it to provide the requested claim charts. (Id.) 21 Nyko proposes that “instead of producing information for all the identified products, 22 information for only one or two representative products may well be produced.” (Id. at 8.) 23 // 24 // 25 26 27 3 At the time the Opposition was filed, Judge Montenegro had not yet ruled on claim construction. A significant part of Nyko’s opposition focused on the inefficiency of 28 1 III. LEGAL STANDARD 2 Federal Rule of Civil Procedure 26(b)(1) provides that 3 [u]nless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any 4 nonprivileged matter that is relevant to any party’s claim or 5 defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in 6 controversy, the parties’ relative access to relevant information, 7 the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the 8 proposed discovery outweighs its likely benefit. 9 Fed. R. Civ. P. 26(b)(1). Rule 33 governs interrogatories to parties and states that “[a]n 10 interrogatory may relate to any matter that may be inquired into under Rule 26(b).” Fed. 11 R. Civ. P. 33(a)(2). Rule 33 further specifies that 12 [a]n interrogatory is not objectionable merely because it asks for 13 an opinion or contention that relates to fact or the application of 14 law to fact, but the court may order that the interrogatory need not be answered until designated discovery is complete, or until 15 a pretrial conference or some other time. 16 Id. Thus, “[i]nterrogatories that seek an opposing party’s contentions on a topic within the 17 scope of Rule 26(b) are permitted.” Finjan, Inc. v. ESET, LLC, No. 17CV183 CAB (BGS), 18 2018 WL 4772124, at *1 (S.D. Cal. Oct. 3, 2018). 19 On a motion to compel, the moving party bears the burden of demonstrating 20 relevance, proportionality and other Rule 26 requirements. Shared P’ship v. Meta 21 Platforms, Inc., Case No. 22-cv-02366-RS (RMI), 2023 WL 2526645, at *3 (N.D. Cal. 22 Mar. 14, 2023) (citing Rodriguez v. Barrita, Inc., No. 09-04057 RS-PSG, 2011 WL 23 5854397 at *2 (N.D. Cal. Nov. 21, 2011)); see also Centeno v. City of Fresno, Case No. 24 1:16-cv-00653-DAD-SAB, 2016 WL 7491634, at *4 (E.D. Cal. Dec. 29, 2016) (“Under 25 the amended Rule 26, relevancy alone is no longer sufficient to obtain discovery, the 26 discovery requested must also be proportional to the needs of the case.”). “[T]he party 27 opposing discovery has the burden of showing that the discovery should be prohibited, and 28 1 the burden of clarifying, explaining or supporting its objections. . . . Those opposing 2 discovery are ‘required to carry a heavy burden of showing’ why discovery should be 3 denied.” Mancini v. Ins. Corp. of New York, No. 07cv1750–L(NLS), 2009 WL 1765295, 4 at *1 (S.D. Cal. June 18, 2009) (quoting Blankenship v. Hearst Corp., 519 F.2d 418, 429 5 (9th Cir.1975); WebSideStory, Inc. v. NetRatings, Inc., 2007 WL 1120567, *1 (S.D. Cal. 6 Apr. 6, 2007)) (citation omitted). 7 IV. DISCUSSION 8 A. Sufficiency of Initial Response 9 Rule 33(d) provides that 10 [i]f the answer to an interrogatory may be determined by examining, auditing, compiling, abstracting, or summarizing a 11 party’s business records (including electronically stored 12 information), and if the burden of deriving or ascertaining the answer will be substantially the same for either party, the 13 responding party may answer by: 14 (1) specifying the records that must be reviewed, in 15 sufficient detail to enable the interrogating party to locate 16 and identify them as readily as the responding party could; and 17 18 (2) giving the interrogating party a reasonable opportunity to examine and audit the records and to make 19 copies, compilations, abstracts, or summaries. 20 21 Fed. R. Civ. P. 33(d). Nyko responded to Interrogatory No. 4 by referencing product 22 manuals, Nyko’s website, and product images pursuant to Rule 33(d). Nyko attaches 23 selections from its Rule 33(d) response as exhibits to its Opposition. (ECF No. 60-3 at 5; 24 ECF No. 65-1 at 2.) These exhibits include copies of Nyko webpages (Exhibit 1); user 25 manuals for Nyko’s Deluxe Master Pak, Charge Base, and Nyko Charge Base Edge 26 (Exhibits 2–3); a copy of the product package for Charge Block Solo (Exhibit 4); and 27 copies of the product package and rendering of the product package for Charge Base 28 (Exhibit 5). (ECF No. 65-1 at 2.) Nyko asserts that the copy of the webpage (Exhibit 1) 1 “already shows what Nyko contends to be the claimed ‘adapter/dongle,’” that it includes 2 “a connector” and “electrical leads,” and that as indicated by the red arrow there is only 3 one “connector” associated with the “adapter” and “electrical leads.” (ECF No. 65 at 4– 4 5.) Nyko insists that “PDP certainly does not need any further information to evaluate 5 Nyko’s identified products with respect to these elements.” Further, Nyko contends that 6 the user manuals provided in Exhibits 2 and 3 “illustrate how its products operate and what 7 components are included.” (Id. at 5.) Nyko also points out that the copy of the product 8 package attached as Exhibit 4 illustrates that “Nyko’s patented dongle is included in the 9 product package” and that the copies of the product package included in Exhibit 5 10 “illustrat[e] the same.” (Id. at 5–6 (internal quotation marks omitted).) Nyko fails to 11 explain any further how this information demonstrates the factual bases for its contention 12 that its products practice one or more claims of each Nyko patent. (ECF No. 60-3 at 4.) 13 Nyko asserts that “PDP does not explain why the information Nyko already provided 14 is not sufficient for [PDP] to at least evaluate Nyko’s identification of the patented 15 products.” (ECF No. 65 at 4.) However, PDP did not propound Interrogatory No. 4 merely 16 to “evaluate Nyko’s identification of the patented products.” (Id.) Rather, PDP seeks 17 detailed factual bases supporting Nyko’s contention that its products practice one or more 18 claims of the Asserted Patents. (ECF No. 60-3 at 4.) Further, courts have granted motions 19 to compel supplemental responses in patent infringement cases where a patentee merely 20 identifies business records under Rule 33(d) in response to contention interrogatories 21 concerning whether the patentee’s products practice the asserted patents. See Apple Inc., 22 2018 WL 733740, at *2–*3 (deeming insufficient a patentee’s response under Rule 33(d) 23 to an interrogatory seeking the legal and factual basis for patentee’s contention that the 24 product practiced one or more claims of the asserted patents and ordering patentee to 25 provide a supplemental response, explaining that because the interrogatory sought the 26 patentee’s contentions, the burden of ascertaining the answer from the documents was not 27 the same for both parties); Blast Motion, Inc. v. Zepp Labs, Inc., No. 15-cv-00700-JLS 28 (NLS), 2016 WL 5107677, at *1, *3–*4 (S.D. Cal. Mar. 2, 2016) (rejecting patentee’s 1 reliance on Rule 33(d) and granting a motion to compel a more complete answer to an 2 interrogatory served by the alleged patent infringer asking patentee to identify how its 3 products embodied the asserted patent limitations, reasoning that patentee was in a better 4 position than the accused infringer to know how its products practiced the asserted patents). 5 Thus, the Court agrees with PDP that Nyko’s response to Interrogatory No. 4 6 pursuant to Rule 33(d) was inadequate. The question therefore becomes whether the 7 supplemental information sought by PDP is relevant and proportional under Rule 26. 8 B. Relevance 9 “Relevance for purposes of discovery is defined very broadly.” Mancini, 2009 WL 10 1765295, at *1 (S.D. Cal. June 18, 2009) (quoting Garneau v. City of Seattle, 147 F.3d 11 802, 812 (9th Cir. 1998)). District courts possess “broad discretion” to determine relevance 12 for discovery purposes and to limit discovery. Sonix Tech. Co. Ltd, 2014 WL 11878354, 13 at *1. 14 Here, PDP’s Interrogatory No. 4 seeks a detailed description of the “factual bases” 15 for Nyko’s contention that the products identified in response to Interrogatory No. 3 16 practice one or more claims of each Nyko Patent, “including by providing a claim chart 17 identifying where each element of each practiced claim is found in the product.” (ECF No. 18 60-3 at 4.) PDP bears the initial burden of establishing the relevance of the requested 19 information. Mancini, 2009 WL 1765295, at *1. 20 PDP states that Nyko does not dispute the relevance of the requested information. 21 (ECF No. 60 at 7.) However, Nyko “does not believe all the requested information is 22 relevant” and maintains that “it is premature to determine relevance” at this stage. 23 (ECF No. 65 at 2 n.1.) PDP maintains that the information sought in Interrogatory No. 4 24 regarding whether Nyko’s products practice one or more claims of each Nyko patent is 25 relevant to questions of infringement, invalidity, marking, profits, and damages. 26 (ECF No. 60 at 4-5.) Despite professing that it “has not conceded that [the requested] 27 discovery is relevant,” (ECF No. 65 at 2 n.1), Nyko does not argue that the information 28 1 requested in Interrogatory No. 4 is fundamentally irrelevant. Rather, Nyko focuses its 2 opposition primarily on the timing and the format of a supplemented response. 3 Nyko identified which of its products practice the asserted claims of the Asserted 4 Patents in its Patent Local Rule 3.1.g. disclosures, thus “preserving the right to rely, for 5 any purpose, on the assertion that its own apparatus, product, device, process, method, act, 6 or other instrumentality practices the claimed invention.” Patent Local Rule 3.1.g.; (see 7 also ECF No. 60-5 at 6–7.) The Court finds that the supplemental information sought by 8 PDP in response to Interrogatory No. 4 is relevant. 9 C. Proportionality and Undue Burden 10 Relevance “is not the end of the inquiry. The Court must consider whether [the 11 requested discovery] is proportional to the needs of the case.” Finjan, Inc., 2018 WL 12 4772124, at *5. As noted above, Federal Rule of Civil Procedure 26(b)(1) permits 13 discovery of relevant, nonprivileged information that is 14 proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the 15 parties’ relative access to relevant information, the parties’ 16 resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed 17 discovery outweighs its likely benefit. 18 Fed. R. Civ. P. 23(b)(1). 19 PDP contends that information regarding the basis for Nyko’s contention that its 20 products practice the Asserted Patents is proportional to the needs of the case as Nyko 21 intends to rely on those products. (See ECF No. 60 at 3–4.) Nyko counters that a 22 supplemental response to Interrogatory No. 4 is neither proportional nor necessary where 23 PDP can extrapolate the requested information from the infringement chart provided by 24 Nyko. (ECF No. 65 at 6.) However, Nyko’s infringement chart pertains to the alleged 25 infringement of the Accused Product and does not address Nyko’s products. “[I]t makes 26 little economic sense for [the accused infringer] to reverse engineer the products in an effort 27 to determine how [the patent holder] claims its own products practice the claims of the 28 1 asserted patents.” Blast Motion, Inc., 2016 WL 5107677, at *3–4 (granting defendant’s 2 motion to compel a further response to an interrogatory asking plaintiff to identify how its 3 products embodied the asserted patent limitations, where “the information [was] uniquely 4 within [plaintiff’s] control”); see also Fed. R. Civ. P. 26(b)(1) (setting forth “the parties’ 5 relative access to relevant information” as a factor relevant to the evaluation of 6 proportionality). 7 As acknowledged by PDP, Civil Local Rule 3.1 does not mandate production of the 8 requested information, whether in claim chart form or otherwise.4 However, “the fact that 9 10 11 4 Patent Local Rule 3.1(g) provides as follows: 12 Not later than fourteen (14) days after the Initial Case 13 Management Conference, a party claiming patent infringement 14 must serve on all parties a “Disclosure of Asserted Claims and Infringement Contentions.” Separately for each opposing party, 15 the “Disclosure of Asserted Claims and Infringement 16 Contentions” must contain the following information: . . . 17 If a party claiming patent infringement asserts or wishes to 18 preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other 19 instrumentality practices the claimed invention, the party must 20 identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality 21 that incorporates or reflects that particular claim[.] 22 Patent L.R. 3.1.g. Patent Local Rule 3.2.e requires that 23 [w]ith the “Disclosure of Asserted Claims and Infringement 24 Contentions,” the party claiming patent infringement must 25 produce to each opposing party or make available for inspection and copying, the following documents in the possession, custody 26 or control of that party . . . 27 If a party identifies instrumentalities pursuant to Patent L.R. 28 1 discovery is not explicitly required by the local rules does not mean that a party is excused 2 from responding to a discovery request.” PersonalWeb Techs., LLC v. Google Inc., 2014 3 WL 4088201, at *5; see also Apple Inc., 2018 WL 733740, at *3 (agreeing with 4 PersonalWeb Techs., LLC and finding that Local Patent Rule 3.1(g) does not prohibit 5 additional discovery, such as an interrogatory seeking the legal and factual basis for 6 patentee’s contention that the identified products practiced the patent claims). 7 In Apple, the alleged patent infringer filed a motion seeking to compel patentee’s 8 response to interrogatories that asked patentee to identify all products that allegedly 9 practiced the asserted patent claims and to provide the legal and factual basis for its 10 contention that the identified products practiced the claims. See Apple Inc., 2018 WL 11 733740, at *1. The discovery request further sought in chart form an identification by 12 patentee of the structures or functionalities in each prototype or product that purportedly 13 met each limitation of each asserted claim. Id. Deeming insufficient patent’s identification 14 of records pursuant to Rule 33(d), the Court ordered patentee to provide a supplemental 15 response to the contention interrogatory. Id. at *2. The Court ordered patentee’s response 16 to include identification of “the structures or functionalities in each prototype or product 17 that purportedly [met] each limitation of each such asserted claim.” Id. at *3. However, 18 the Court agreed with patentee that providing element-by-element claim charts would be 19 unduly burdensome and specified that patentee’s supplemental response did not have to be 20 in chart form. Id. at *2. 21 In Sonix, the alleged patent infringer served interrogatories on patentee, asking 22 patentee to identify all of its products that practiced the inventions covered by any claim 23 of the asserted patents and for each product identified, to identify all facts relating to how 24 25 26 of elements of such instrumentalities the patent claimant relies 27 upon as embodying any asserted claims.

28 1 each product practices the required elements of each claim of the asserted patents. Sonix, 2 2014 WL 11878354, at *3. Patentee argued that the requested discovery was unduly 3 burdensome, as it required a detailed mapping of 91 claims to each product. Id. The Court 4 granted the alleged infringer’s motion to compel discovery, but limited patentee’s response 5 to the seven patent claims actually asserted by patentee. Id. The Court reached this 6 conclusion, even though patentee conceded that it did not rely on its own products, did not 7 assert commercial success, and did not intend to assert a lost profit theory of damages. Id. 8 Although the Court determined that “the interrogatories essentially require[d] an extensive 9 detailed mapping,” the interrogatories did not specifically request the preparation of claim 10 charts. Id. 11 Here, far from disclaiming reliance on its own products, Nyko identified the 12 12 products in its Patent Local Rule 3.1 Disclosure of Asserted Claims and Infringement 13 Contentions, thus “preserv[ing] the right to rely, for any purpose, on the assertion that its 14 own apparatus, product, device, process, method, act, or other instrumentality practices the 15 claimed invention.” Patent L.R. 3.1.g. However, the Court finds that providing a 16 supplemental response in chart form would pose an undue burden, particularly where Nyko 17 would be required to prepare 48 claims charts for the 12 products. (ECF No. 60-5 at 4.) 18 See Apple Inc., 2018 WL 733740, at *2; see also Finjan, Inc, 2018 WL 4772124, at *5 19 (holding that parties may seek discovery in chart form even where not specifically 20 authorized by the local rules, but “recogniz[ing] that demanding this level of specificity in 21 a claim chart, particularly the mapping it demands, is a significant burden”; Blast Motion, 22 Inc., 2016 WL 5107677, at *3 (granting defendant’s request to compel a further response 23 to its interrogatory pertaining to which disclosures in earlier patent applications supported 24 plaintiff’s claim to a priority date for each of the five patents-in-suit, but declining to order 25 plaintiff to prepare its response in chart form). Instead, Nyko must provide a supplemental 26 response to Interrogatory No. 4 that: (a) for each product identified in Nyko’s response to 27 Interrogatory No. 3 which Nyko still maintains practices the asserted patents in light of the 28 claim construction order, identifies the Nyko patent(s) and specific claim(s) that Nyko 1 contends each product practices; and (b) provides a reasonably detailed description 2 identifying the principal product components that correspond to the claims in the Asserted 3 Patents. Nyko may, where appropriate, cross-reference previously produced documents, 4 such as user manuals, product packaging, website materials, and existing claim charts, to 5 illustrate or support its description, but may not rely solely on Rule 33(d) without providing 6 the requested factual explanation. 7 If it is no longer Nyko’s position following issuance of the claim construction order 8 that certain products identified in response to Interrogatory No. 3 practice the asserted 9 patents, Nyko may omit those products from its response to Interrogatory No. 4, provided 10 it explains the basis for the omission. 11 V. CONCLUSION 12 For the above-stated reasons, PDP’s Motion is GRANTED in part and DENIED in 13 part. On or before fourteen (14) days after the issuance of this Order, Nyko shall serve a 14 supplemental response to Interrogatory No. 4 that: (a) for each product identified in Nyko’s 15 response to Interrogatory No. 3 which Nyko still maintains practices the asserted patents 16 in light of the claim construction order, identifies the Nyko patent(s) and specific claim(s) 17 that Nyko contends each product practices; and (b) provides a reasonably detailed 18 description identifying the principal product components that correspond to the claims in 19 the Asserted Patents. Nyko may, where appropriate, cross-reference previously produced 20 documents, such as user manuals, product packaging, website materials, and existing claim 21 charts, to illustrate or support its description, but may not rely solely on Rule 33(d) without 22 providing the requested factual explanation. 23 // 24 // 25 // 26 // 27 // 28 // 1 To the extent PDP seeks full claim charts responsive to Interrogatory No. 4, PDP’s 2 ||Motion is DENIED without prejudice. 3 IT IS SO ORDERED. 4 ||Dated: September 1, 2026 . che Ba rt n. Jill L. Burkhardt 6 ited States Magistrate Judge 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28