SHARKNINJA OPERATING LLC and SHARKNINJA SALES COMPANY, Plaintiffs and Counterclaim-Defendants, v. DYSON, INC. and DYSON TECHNOLOGY LIMITED, Defendants and Counterclaim-Plaintiffs No. 1:23-cv-11277-ADB United States District Court, D. Massachusetts Filed September 16, 2024 Cabell, Donald L., United States Magistrate Judge ORDER ON DEFENDANTS’ MOTION TO COMPEL I. INTRODUCTION *1 Plaintiffs SharkNinja Sales Company and SharkNinja Operating LLC (collectively “SharkNinja”) have brought an action against defendants Dyson, Inc. and Dyson Technology Limited (collectively “Dyson”) seeking a declaratory judgment of noninfringement with respect to a particular patent, U.S. Patent No. 11,044,979 (“the ‘979 Patent”). Dyson brought a counterclaim against SharkNinja alleging infringement of the ‘979 Patent, and SharkNinja, in its answer to the counterclaim, raised defenses of noninfringement and nonenablement and brought a counterclaim alleging invalidity of the patent.[1] Against this backdrop, SharkNinja moves to compel the production of certain categories of information related to its invalidity counterclaim against the ‘979 Patent. (D. 148). Dyson opposes the motion. (D. 163). For the following reasons, the motion to compel is allowed in part and denied in part. II. BACKGROUND SharkNinja's motion initially sought production of: (1) documents regarding Dyson's nullity petition, that is, its filing and withdrawal of an invalidity petition of Dyson's Chinese Patent CN204483373U / CN201520158687.1 (“the CN ‘373U Patent”); (2) a Federal Rule of Civil Procedure 30(b)(6) witness to testify about the filing and withdrawal of the Chinese invalidity petition against the CN ‘373U Patent; and (3) native computer-aided design (“CAD”) files for prototypes of the Dyson Airwrap curler and its curler attachment. (D. 149). SharkNinja represents, and Dyson did not dispute, that the “Dyson Airwrap®” hair curler (“Airwrap”) uses technology disclosed and claimed in Dyson's ‘979 Patent. (D. 150-19) (SharkNinja counsel's email thanking Dyson's counsel for agreeing that no Dyson product, other than all versions of Airwrap, practice the ‘979 Patent) (D. 168, pp. 24-25) (Dyson's counsel stating there is no dispute that the documents SharkNinja seeks are prototypes). Following a court hearing on the motion, the court instructed the parties to engage in further discussions in an effort to reach a compromise. Per the court's instruction, they reported back to the court by email (“August email”). As a result of these further discussions, SharkNinja presently seeks: (1) written responses or deposition testimony from Dyson admitting that Dyson authorized the filing of the Chinese nullity petition (“first request”); (2) written responses or deposition testimony from Dyson admitting “that Dyson authorized [emphasis added] and filed specific language regarding the invalidity of specific, relevant claims and specific invalidation references pointed to in the nullity petition, as described in SharkNinja's RFAs 21-22” (“second request”);[2] and (3) native CAD files for all 2018 and 2022 Dyson Airwrap curler attachments, and prototypes of “curler attachments in the Team Center location identified by [Brett] Coulton in his deposition, dated prior to January 1, 2016” (“third request”). (August email). *2 In opposition to the first request, Dyson asserts that its amended responses to SharkNinja's RFAs now state that “Dyson Technology Limited ... did authorize and file papers concerning Chinese Nullity Petition 5W134719.” (August email) (emphasis added). Dyson therefore maintains that it provided the information SharkNinja requested during the hearing such that no additional information or further supplementation to the RFAs is required. (August email). Regarding the second request, Dyson fails to address it in the August email. Dyson's opposition brief, however, asserts that Dyson produced all relevant, non-privileged documents pertaining to the nullity proceeding, and, further, that SharNinja focuses on irrelevant issues.[3] (D. 163). As to the third request, Dyson reasserts its position that the hundreds of CAD files requested are irrelevant to this action. Nonetheless, Dyson is willing to compromise and produce the native CAD files for the 2018 and 2022 Airwrap prototypes, as well as those of two pre-filing prototypes of SharkNinja's choosing. Any further production, however, is unduly burdensome, according to Dyson. (August email). III. LEGAL STANDARD A party moving to compel discovery bears the initial burden of showing the relevance of the information sought. DMO Norwood LLC v. Kia Am., Inc., 691 F. Supp. 3d 252, 257 (D. Mass. 2023). Once the movant makes this showing, the burden shifts to the nonmoving party to show that the requested discovery is nonetheless improper. Roy v. FedEx Ground Package Sys. Inc., 675 F. Supp. 3d 140, 144 (D. Mass. 2023) (citing Controlled Kinematics, Inc. v. Novanta Corp., Civil Action No. 17-cv-11029-ADB, 2019 WL 3082354, at *2 (D. Mass. July 15, 2019)). For requested materials to be discoverable, they must be both “relevant to any party's claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). While the information sought must be relevant to a party's claim or defense, “it need not be admissible in evidence.” Fed. R. Civ. P. 26(b)(1); Osagie v. Borough of State Coll., 586 F. Supp. 3d 314, 321 (M.D. Pa. 2022) (Movant needs to show “relevance of the information sought to a particular claim or defense.”) (citation omitted). The proportionality analysis, in turn, considers “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). As stated in Federal Rule of Civil Procedure 26(b)(2), the court must limit the frequency or extent of discovery otherwise allowed if it determines: (i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive; ... or (iii) the proposed discovery is outside the scope permitted by Rule 26(b)(1). Fed. R. Civ. P. 26(b)(2)(C). In evaluating burden, it is appropriate to consider what has been already produced. In re Prudential Ins. Co. of Am. SGLI/VGLI Cont. Litig., No. CA 11-MD-02208-MAP, 2012 WL 548894, at *2 (D. Mass. Feb. 16, 2012). IV. DISCUSSION A. Chinese Nullity Petition SharkNinja seeks written statements or testimony from Dyson that it authorized: (1) the filing of the Chinese nullity petition, i.e., the first request; and (2) the language therein regarding the invalidity of specific claims and the invalidity references in the nullity petition, as described in SharkNinja's RFAs 21 and 22, i.e., the second request. (August email). Dyson argues that the requested information is already included in its amended responses to the RFAs. *3 The first request is moot. As noted, Dyson represents that its “supplemental RFA responses” served after the hearing “state that ‘Dyson Technology Limited ... did authorize and file papers concerning [the] Chinese Nullity Petition.’ ” (August email). To the extent SharkNinja continues to request a deposition at this point regarding the first request, the request fails to persuade. Having supplemented the response, defendant Dyson Technology Limited is bound by that admission. See Talley v. United States, 990 F.2d 695, 698 (1st Cir. 1993) (“An admission under Fed. R. Civ. P. 36(a) is, by the terms of the rule, binding on the party making the admission and cannot be contradicted.”). Proceeding to the second request, the language in RFAs 21 and 22 asks Dyson to admit that it stated on or around November 23, 2023 that claims 1 and 17 in the CN ‘373U Patent were invalid, including invalid for lack of novelty.[4] (D. 163-3, RFAs 21-22). Similar to Dyson's responses to RFAs 21 and 22, Dyson presently argues that the nullity petition has no bearing on this case and is irrelevant. (August email). Dyson is mistaken. Significantly, the nullity petition regarding the CN ‘373U Patent is relevant to this case regarding the ‘979 Patent because the two patents are related. To explain, the language in claims 1 and 17 of the CN ‘373U Patent corresponds to the language in claims 1 and 17 of the ‘979 Patent. The similar language and, at times, many of the same terms in claims 1 and 17 of each patent evidences the relatedness of the two patents. See generally Aortic Innovations LLC v. Edwards Lifesciences Corp., 2023 WL 7545343, at *5 (D. Del. 2023) (“When the same term is disputed across related patents, Courts ‘presume, unless otherwise compelled, that the same claim term in ... related patents carries the same construed meaning.’ ”) (quoting Omega Eng'g, Inc, v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)), appeal filed, No. 24-1145 (Fed. Cir. Nov. 14, 2023). More, the two patents contain the exact same 34 figures. (D. 150-5, 150-6). Accordingly, the court accepts and credits SharkNinja's representations that the two patents are related. Continuing on, a request for an admission must fall within the scope of Rule 26(b)(1). Fed. R. Civ. P. 36(a)(1). Pertinently, the rule states that “[a] party may serve on any other party a written request to admit ... the truth of any matters within the scope of Rule 26(b)(1) relating to ... facts, the application of law to fact, or opinions about either.” Fed. R. Civ. P. 36(a)(1) (emphasis added). As earlier stated, under Rule 26(b)(1), “[p]arties may obtain discovery ... that is relevant to any party's claim or defense and proportional to the needs of the case”); see Hammock v. Rogers, Case No. 1:17–cv–01939–CAB, 2018 WL 3374053, at *2 (N.D. Ohio July 10, 2018) (quoting Rule 36(a)(1)’s reference to Rule 26(b)(1), analyzing party's objections to admissions under Rule 26(b)(1), and finding them insufficient because requests were relevant to defendant's defenses). This framework is entirely consistent with the aforementioned objection Dyson makes to RFAs 21 and 22, namely, they seek information that is neither relevant nor proportional to the needs of the case. *4 As to relevance, the relatedness of the CN ‘373U Patent and the ‘979 Patent persuasively supports that the invalidity information sought in the second request regarding the nullity petition is relevant to SharkNinja's invalidity counterclaim, including the nonenablement counterclaim therein, in this action.[5] Put differently, statements about the invalidity of claims 1 and 17 of the CN ‘373U Patent as well as invalidity references in the nullity petition, i.e., the second request, are relevant to the invalidity counterclaim of the related ‘979 Patent.[6] The information sought in the second request is also proportional to the needs of this case. Specifically, it is important in resolving the issue of invalidity, including enablement, and Dyson has greater access to the information than SharkNinja. In light of the relevance and proportionality of the information sought in RFAs 21 and 22, as discussed, a short Rule 30(b)(6) deposition is warranted. First, SharkNinja requests a short deposition, and it timely noticed the Rule 30(b)(6) deposition prior to the close of discovery. (D. 168, p. 15). Second, depositions, even if brief, provide the benefits of cross examination. See Fed. Deposit Ins. Corp. v. Gálan-Álvarez, Civil Action No. 12-1029 (PAD), 2018 WL 11417749, at *1 (D.P.R. June 25, 2018) (describing “depositions by oral examination” as “universally recognized as the favored form of discovery because they allow the parties to cross examine the deponent like no other method”). Accordingly, SharkNinja may elicit testimony regarding the following: whether Dyson authorized the language regarding invalidity of the claims and the invalidation references in the nullity petition, as described in RFAs 21 and 22.[7] Alternatively, the parties may agree to written questions in lieu of an oral examination. See Fed. R. Civ. P. 30(c)(3). B. CAD Files of Airwrap Prototypes SharkNinja submits that the native CAD files for Airwrap curler attachment prototypes prior to January 1, 2016 as well as for the 2018 and 2022 Airwrap prototypes are relevant to this case because they demonstrate the scale of the efforts by Dyson to create a workable product. Thus, SharkNinja contends they could constitute “undue experimentation” as part of a legitimate showing that the ‘979 Patent is invalid due to insufficient enablement. (August email)[8] (D. 149, pp. 7-8). The crux of SharkNinja's position is that a person with reasonable skill in the art would need to resort to undue experimentation to produce a functional Airwrap curler based on the description of the invention in the ‘979 Patent at the time it was filed. Further, the native CAD files provide the only means to test the actual functionality of the prototypes, which practice the invention; and the results of such testing will allow SharkNinja to better measure undue experimentation under the guidance provided in the ‘979 Patent, according to SharkNinja. (August email) (D. 168, p. 27) (“You need the native CAD file[s] in order to 3D print protypes in order to test them physically” and “run 3D simulations on the airflow.”). *5 Dyson maintains that the CAD files are irrelevant to any claim or defense. In that vein, it argues that the enablement requirement does not require a disclosure to enable a commercial product. Dyson also emphasizes the extensive discovery it has produced to date. (August email) (D. 163). Overall, the parties disagree on the merits and legal validity of the insufficient enablement theory. In that regard, it is not within the court's purview in deciding the discovery issues to also decide the legal merits of the insufficient enablement claim or affirmative defense. See Big City Dynasty v. FP Holdings, L.P., 336 F.R.D. 507, 512-13 (D. Nev. 2020) (noting “this Court has repeatedly rejected attempts to define the bounds of appropriate discovery by challenging the merits of existing claims or defenses in briefing discovery motions”) (collecting authority). Nonetheless, an understanding of enablement is instructive in determining the relevance and proportionality of the requested native CAD files. 1. Relevance A. Prefiling Prototypes[9] For reasons discussed below, production of the native CAD files documents for prototypes in the years leading up to the March 2015 filing of the ‘979 Patent bears on the insufficient enablement counterclaim and affirmative defense. The native CAD files for such prototypes are therefore relevant. As noted, understanding the relevance of these protypes begins with an understanding of enablement. The enablement statute requires that patent specifications must: contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same ... 35 U.S.C. § 112(a) (“section 112(a)”). The “enablement requirement” necessitates that “a patent application ... disclose the claimed invention,” at the time the application was filed, to enable a person skilled in the art to practice the invention without “undue experimentation.” In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) (per curiam). Sufficient enablement is a question of law based on underlying factual determinations, and because patents are presumed to be valid, lack of enablement must be proven by clear and convincing evidence. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 684 (Fed. Cir. 2015); ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010). The fact “[t]hat some [prefiling] experimentation is necessary does not preclude enablement. Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1573, 1575 (Fed. Cir. 1984). Rather, “the amount of experimentation ... must not be unduly extensive.” Id. Even considerable experimentation may be permissible where it is “routine or if the specification ... provides a reasonable amount of guidance” regarding “the direction in which the experimentation should proceed.” Vasudevan Software, 782 F.3d at 684 (quoting In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). *6 Additionally, enablement distinguishes experimentation to produce a commercial embodiment from experimentation targeted to the scope of the claimed invention. See CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003). In that regard, Dyson argues that protypes made to build a commercial embodiment of the patent do not show nonenablement. Hence, Dyson contends that the native CAD files are irrelevant. SharkNinja responds that it is not tying the protypes to a commercial embodiment. Rather, the prototypes aim to practice the invention and it needs the native CAD files to test the functionality of the protypes physically, such as by running 3D simulations on the airflow, according to SharkNinja, or on the “fluid flow,” as claimed in the patent.[10] To further explain the distinction, a specification need not enable a person “of ordinary skill in the art to make and use a perfected, commercially viable embodiment.” See CFMT, 349 F.3d at 1338 (also stating “[e]nablement does not require an inventor to meet lofty standards for success in the commercial marketplace”). Instead, section 112(a) “requires only that the inventor enable one of skill in the art to make and use the full scope of the claimed invention.” Id.; see id. (stating “lengthy experiments ... do not show nonenablement” where inventors undertook work to satisfy “particular commercial requirements, not to show enablement of the scope of the claimed inventions”). Relatedly, the time it takes to make a commercial-grade embodiment of a specified invention “is not, itself, determinative of non-enablement.” Vasudevan Software, 782 F.3d at 684 (citing CFMT, 349 F.3d at 1338). A patent is therefore not required to enable the most efficient commercial embodiment unless that is an explicit part of the claims. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1307 (Fed. Cir. 2010). Patents are also not “production documents,” meaning that the enablement requirement does not require disclosure of “data on how to mass-produce the invented product.” Christianson v. Colt Indus. Operating Corp., 822 F.2d 1544, 1562 (Fed. Cir. 1987), vacated on other grounds, 486 U.S. 800 (1988); Douglas v. United States, 510 F.2d 364, 366 (Ct. Cl. 1975) (rejecting nonenablement challenge and noting “specification is not required to be a production blueprint” and “[s]ome experimentation and exercise of judgment is to be expected”); Trio Process Corp. v. L. Goldstein's Sons, Inc., 461 F.2d 66, 74 (3d Cir. 1972) (“Patent specifications need not be so detailed as ‘production specifications.’ ”). Importantly, in evaluating the question of undue experimentation, courts rely on the following factors: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Wands, 858 F.2d at 737. As noted, one such factor is “the presence or absence of working examples.” Id.; see also Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1378-79 (Fed. Cir. 2007) (using Wands factors in holding patent was not enabled in part because “there was no indication of any prototype ... having been made”). Another factor pertinent to the pending motion is the quantity of experimentation. See ALZA, 603 F.3d at 941-42 (affirming lower court's nonenablement conclusion and finding no clear error in lower court crediting ALZA employee's testimony “that ‘ALZA had in fact tried and failed for a few months to produce non-osmotic ...dosage forms’ ”). *7 Dyson argues that the native CAD files of Airwrap prototypes bear no relevance to the enablement of the ‘979 Patent because there is “undisputed testimony from inventor Alisdair MacLaine that his first prototype, which was created years before the patent application, worked for its intended purpose.” (August email) (citing MacLaine Transcript, pp. 253-255, 259, as confirming that “ ‘core concept’ of the Airwap worked in the very first 3D printed prototype” and “design of the Airwrap had been ‘worked out’ by June 7, 2012”).[11] This testimony is certainly relevant to the issue of enablement. The relevance of the inventor's testimony, however, does not preclude the relevance of other evidence regarding undue experimentation. See ALZA, 603 F.3d at 942-43 (affirming district court's determination of insufficient enablement on “the record as a whole” based, in part, on ALZA employee's testimony regarding ALZA's difficulties creating claimed “non-osmotic dosage form,” which was relevant to “quantity of experimentation” as not undue experimentation); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (finding strong evidence of insufficient enablement in failed attempts by inventor to enable invention in commercial product purporting to embody patent claims). The native CAD files are likely to provide such evidence. Specifically, as explained by SharkNinja, the native CAD files of pre-filing prototypes would allow testing the functionality of Airwrap protypes that practice the claimed invention. That information could support or challenge inventor testimony regarding working examples of the product, the large or small quantity of experimentation, and whether the experimentation was routine. See Wands, 858 F.2d at 737 (listing factors including “quantity of experimentation necessary and “presence or absence of working example”); Ormco, 498 F.3d at 1319; ALZA, 603 F.3d at 940. As such, the native CAD files of pre-filing prototypes are relevant to the nonenablement counterclaim and affirmative defense. To be sure, enablement does not require that the “patent[’s] disclosure enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment.” CFMT, 349 F.3d at 1338 (emphasis added). Succinctly stated, a patent need not enable a commercial embodiment to be valid. See id. (stating “[e]nablement does not require an inventor to meet lofty standards for success in the commercial marketplace”). Rather, enablement pertains the patent's disclosure of “the scope of the claimed invention” and the “practice of the invention.” Id. at 1339; accord Vasudevan Software, 782 F.3d at 684. Hence, a lengthy time and multiple experiments solely to develop a commercial-grade embodiment does not show nonenablement. See Vasudevan Software, 782 F.3d at 684; CFMT, 349 F.3d at 1338-39 (explaining “lengthy experiments” by inventors at Texas Instruments did “not show nonenablement because the inventors undertook that work to satisfy [Texas Instruments’] particular commercial requirements, not to show enablement of the scope of the claimed inventions”). Thus, work or experimentation solely on a commercial embodiment that does not practice the claimed invention is not relevant to a nonenablement claim or defense. Conversely, discovery targeting pre-filing prototypes that practice the claimed invention and testing those prototypes for functionality in relation to the guidance provided in the ‘979 Patent is relevant to the nonenablement counterclaim and affirmative defense. In that regard, the extent of the experimentation in creating prototypes for the claimed invention in the ‘979 Patent beyond, or not exclusively regarding, commercial embodiment is relevant to whether the experimentation is undue. B. Post-Filing Prototypes For similar reasons, which need not be repeated, native CAD files post-dating the ‘979 Patent application for a limited time period are also relevant to the nonenablement counterclaim and affirmative defense. To begin, Dyson argues that SharkNinja's supporting memorandum fails to cite a case suggesting that functionality of a post-filing prototype has any bearing on enablement.[12] Regardless, SharkNinja presently cites Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671 (Fed. Cir. 2015), in the August email. In Vasudevan, the inventor took three years after filing the patent application “to build a functioning embodiment of the invention.” Id. at 683. Vasudevan Software, Inc., the patentee, asserted that “that the inventor could have developed a functional prototype with far less experimentation” and the experimentation was therefore not undue. Id. at 684. Further, it supported the assertion with the opinion of its expert “that the inventor's one man-year experimentation was not undue.” Id. The Federal Circuit cited this and additional evidence in reversing the district court's summary judgment of invalidity for nonenablement. Id. at 684-685. Vasudevan thus supports the principle that post-filing experimentation to develop a functional prototype is relevant to show enablement. Native CAD files of post-filing prototypes that practice the invention for a limited time period post-dating the March 2015 patent application are therefore relevant. Specifically, testing the functionality of such prototypes relative to the guidance in the ‘979 Patent, which is SharkNinja's plan, is relevant to the nonenablement counterclaim and affirmative defense. Such testing or work directed to the scope of the claimed invention described in the ‘979 Patent’s specification is distinct from testing directed solely to meet commercial requirements. Cf. CMFT, 349 F.3d at 1339 (inventors’ “work to satisfy [Texas Instrument's] particular commercial requirements” does not show nonenablement). *8 Dyson attempts to distinguish Vasudevan because the inventor of the ‘979 Patent created the first prototype years before the patent application, and it worked for its intended purpose. (August email). Even so, the general principle implicit in Vasudevan is that post-filing experimentation of a functional prototype, limited in time to one year was not undue experimentation under the circumstances in Vasudevan. See id. at 684. Further, at issue here is discovery as opposed to the merits of the nonenablement counterclaim or affirmative defense. Post-filing testing of Airwrap prototypes that practice the claimed invention between the March 12, 2015 application filing and SharkNinja's January 1, 2016 post-filing end date in the August email is therefore relevant to enablement. To be sure, enablement is gauged against “the date of the filing” of the patent's application. CMFT, 349 F.3d at 1339. It is therefore error to gauge enablement based on later, post-application developments. Id. Improvements of an invention are “ubiquitous in patent law” and “such developments do not alone cast doubt on enablement of the original invention.” Id. at 1340. Here, producing the native CAD files to test their functionality against the guidance provided in the ‘979 Patent, as envisioned by SharkNinja, adequately targets the correct time period, namely, the March 2015 application date. In sum, discovery targeting prefiling and post-filing prototypes that practice the claimed invention and testing those prototypes in relation to the guidance and disclosures in the ‘979 Patent beyond (or not exclusively regarding) commercial embodiments between March 12, 2015 and January 1, 2016 is relevant to the enablement counterclaim and affirmative defense.[13] 2. Proportionality Dyson argues that it would be unduly burdensome to produce the thousands of native CAD files that SharkNinja requests. (D. 163). Further, such files are voluminous, as stated in Dyson's brief. (D. 163). At the subsequent hearing, however, SharkNinja represented, and Dyson did not thereafter explicitly deny, that the protypes are in one folder in one location and that Dyson is able to search by the file type. (D. 168, pp. 42-46) (August email). To reduce the undue burden, if any, SharkNinja is also willing to consider limiting the number of native CAD files produced provided Dyson quantifies the number of files at issue and provides other information. (August email). Turning to the relevant factors, Dyson has access to the native CAD files whereas SharkNinja lacks such access. The native CAD files are the only means to test the functionality of the protypes and producing the files is highly germane and important to resolve the enablement issue. It is also likely that the native CAD files are in one folder, which can be searched by file type. As such, the burden to produce the native CAD files does not outweigh the likely benefit of these files to the nonenablement claim and defense. Balancing the Rule 26(b)(1) proportionality factors and having considered the substantial production of discovery maters to date by Dyson,[14] Dyson is instructed to produce the following: native CAD files of Airwrap prototypes that practice the invention disclosed in the ‘979 Patent for the 2012 to January 1, 2016 time period.[15] Dyson is not required to produce native CAD files that solely and exclusively consist of work on a perfected, commercially viable embodiment. See CMFT, 349 F.3d at 1338. As offered by Dyson, it shall also produce the native CAD files for the 2018 and 2020 Airwrap prototypes. V. CONCLUSION *9 For the reasons discussed above, SharkNinja's motion to compel (D. 148) is ALLOWED in part and DENIED in part. Footnotes [1] The invalidity counterclaim includes the assertion that the ‘979 Patent does not meet the requirements of 35 U.S.C. § 112(a), the enablement statute. [2] The above quote of the second request is taken from the August email submitted after the hearing. It corresponds to SharkNinja's broader requests at the hearing that are not tethered to requests for admissions (“RFAs”) 21 and 22. (D. 168, p. 7) (“We want someone to confirm that Dyson ... authorized the statements and the grounds of invalidation that was in that opposition.”); (D. 168, p. 8) (“[W]e're looking for ... admissions about ... what corporate entity of Dyson ... authorized the statements that were made in the filing.”). The court adheres to the more recent request in the email, which tethers the second request to RFAs 21 and 22. [3] Dyson repeated this position at the hearing. (D. 168, pp. 10-13). [4] More precisely, the two RFAs read as follows: 21. Admit that Dyson Technologies, Inc., on or around November 17, 2023, stated that Claims 1 and 17 of the CN ’373U patent were invalid for lack of novelty over CN ’771Y. 22. Admit that Dyson Technologies, Inc. stated in public filings on or around November 17, 2023 that Claims 1 and 17 of CN ’373U reciting the following text were invalid,” at which point the request sets out claims 1 and 17. (D. 163-3, Nos. 21, 22). Dyson “Denied” each request and added objections. The objections submit that information regarding the CN 373U Patent is irrelevant to any claim or defense. More broadly, the general objections state that the requests are neither relevant nor proportional to the needs of this case. (D. 150-12). [5] The information sought in the second request is also relevant to the nonenablement affirmative defense. [6] The fact that Dyson produced all three documents in the nullity petition does not directly address what SharkNinja seeks in the second request, which encompasses, on a granular level, that Dyson admit that it stated on or around November 17, 2023 what is described in RFAs 21 and 22, namely, that claims 1 and 17 in the CN ‘373U Patent are invalid. [7] The parties are instructed to broadly construe this topic. For example, it may encompass the Dyson entity that authorized the language or statements unless not disclosing this information is necessary to preserve a privilege. Further, this topic is encompassed in the Rule 30(b)(6) topics in the prior deposition notice served on Dyson. That notice included a topic seeking “All facts and circumstances regarding Dyson's filing of and withdrawal of invalidity petition papers with respect to the CN ’373U patent.” (D. 150-10, Topic No. 15). [8] SharkNinja initially sought prototypes for the Airwrap curler attachment from 2012 through 2018 (D. 149) as opposed to more recently seeking prototypes prior to January 1, 2016 (August email). [9] Because the enablement requirement is assessed at the time the patent application is filed, the court examines relevance first as to prefiling prototypes and second as to post-filing prototypes. See MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp., 248 Fed. Appx. 199, 203–204 (Fed. Cir. 2007) (“[E]nablement requirement is satisfied if the patent teaches a person skilled in the art at the time the patent application was filed how to make the claimed invention without undue experimentation.”) (emphasis added) (citation omitted). [10] As an aside, the specification describes the invention, in part, as hair “wrap[ing] around the head whilst air or fluid exits through the slots drying the hair” and “[t]he hair wraps automatically due to the flow of air around the surface of the head.” (D. 150-5, ‘979 Patent, col. 5, ll. 8-12). [11] In line with the inventor's above testimony, SharkNinja's supporting memorandum requested native CAD files from 2012 to 2018 stored at Dyson's Team Center location. [12] Dyson refers to SharkNinja's motion, which the court interprets as a reference to SharkNinja's supporting brief. [13] Dyson offers as a compromise production of the native CAD files for the 2018 and 2022 Airwrap prototypes. In light of this commendable offer, they are also subject to production. [14] Dyson identifies the matters produced thus far in its brief. (D. 163). As the court understands the issue, however, the files requested are relevant in their native format because only native CAD files allow for testing to evaluate the functionality of the prototype embodiments. [15] As previously stated, the August email asks for native CAD files prior to January 1, 2016 stored at Dyson's Team Center location. The original motion requested native CAD files from 2012 to 2018 stored at Dyson's Team Center location.