Resh, Inc v. Skimlite Manufacturing Inc

Background

Resh, Inc. brought this patent-infringement action concerning U.S. Patent No. 11,141,852, titled “Telepole Apparatus and Related Methods.” Resh alleged that Skimlite Manufacturing Inc. (referred to in the opinion as “RCI”), James Conrad, and Barrett Conrad infringed the patent. Defendants moved to dismiss the Second Amended Complaint under Federal Rule of Civil Procedure 12(b)(6), which addresses whether a complaint states a legally sufficient claim, and Rule 12(b)(3), which addresses improper venue. They also moved to strike certain allegations under Rule 12(f).

The court had previously dismissed the original complaint in part and dismissed the first amended complaint for not meeting Rule 8(a)’s requirement of a short and plain statement of the claim. Resh then filed the Second Amended Complaint.

Rulings on Rule 12(b)(6) Issues

The court declined to dismiss the Second Amended Complaint merely because Resh sometimes referred to the defendants collectively. Resh had removed the generalized allegations identified in the court’s earlier order, and the remaining allegations plausibly described Resh’s theories that the Conrads controlled RCI and that RCI was their alter ego. The court also declined to dismiss allegations made “on information and belief,” explaining that disputes about the truth of those allegations should be addressed in an answer and were not grounds for dismissal for failure to state a claim.

The court dismissed Resh’s alter-ego theory with prejudice and without leave to amend. It held that Resh had not alleged specific facts showing the required unity of interest and ownership between RCI and the Conrads. The court also found no sufficient factual allegations showing that respecting the companies’ separate identities would cause fraud or injustice.

The court dismissed Resh’s contributory-infringement claims with prejudice and without leave to amend. Resh alleged that Defendants’ replacement grips and lever-lock detent components contributed to infringement because they lacked substantial non-infringing uses. The court held that the Second Amended Complaint did not allege an underlying act of direct infringement involving those replacement parts. It further held that sales of unpatented replacement parts for the same allegedly infringing poles could not support a separate contributory-infringement theory based on the allegations presented.

The court also dismissed Resh’s claim for pre-issuance damages under 35 U.S.C. § 154(d), with prejudice and without leave to amend. That statute can allow reasonable royalties for certain infringement occurring before a patent issues when the accused party had actual notice of the published application and the published and issued claims are substantially identical. The court held that the relevant claims in two publications were not substantially identical to issued claim 21 because they differed in required components and limitations.

Barrett Conrad

Barrett Conrad sought dismissal for lack of venue and for failure to plead direct and induced infringement. The court dismissed Resh’s claims against Barrett Conrad for improper venue under Rule 12(b)(3), without prejudice to raising those claims in the proper venue. The court did not reach Barrett Conrad’s other arguments. The court found that the allegations did not plausibly establish that he committed acts of infringement in the district when the action was filed.

James Conrad

The court denied the motion to dismiss Resh’s direct-infringement claims against James Conrad. Although the allegations were limited, the court found that Resh identified the patent, the accused products, and how the products allegedly infringed. The court also rejected the argument that James Conrad could not be personally liable because he acted for RCI. The court explained that a corporate officer may be personally liable for the officer’s own infringing acts, even when those acts occurred in a corporate capacity.

The court granted the motion to dismiss Resh’s induced-infringement claim against James Conrad. It held that the allegations that he controlled and directed RCI and intended to cause infringement were legal conclusions without enough supporting facts.

Motion to Strike

The court granted the motion to strike paragraphs 63–65, 67–69, 91, and 93. Those allegations concerned a 2018 lawsuit and alleged misrepresentations about the entity “Skimlite Manufacturing.” The court found that some of the allegations were immaterial to whether RCI willfully infringed the patent at issue. The court declined to strike paragraphs 66, 73(b), 92, and 94 because it was not clear that those allegations could have no possible bearing on the litigation.

Disposition

The court granted Defendants’ motion in part and denied it in part. It dismissed the alter-ego theory, contributory-infringement claims, pre-issuance-damages claim, and James Conrad’s induced-infringement claim without leave to amend, using the prejudice terms stated in the order. It dismissed the claims against Barrett Conrad for improper venue without prejudice to raising them in the proper venue. The motion was otherwise denied. The court denied Resh’s request for further leave to amend and denied Defendants’ request to file a sanctions motion. It stated that Defendants could seek attorneys’ fees at the appropriate time. A separate motion for relief from the Patent Standing Order was denied as moot.