Resh, Inc v. Skimlite Manufacturing Inc

Background

Resh alleged that the defendants infringed U.S. Patent No. 11,141,852, which concerns a telescoping pole for cleaning pools. The parties exchanged infringement and invalidity contentions under the court’s Patent Local Rules and scheduling order.

The defendants identified two physical pool poles—the A.G. Pro pole and the Solakian pole—as prior art to the asserted patent claims under 35 U.S.C. § 102. Skimlite then served two contention interrogatories asking Resh to describe the complete factual and legal bases for its positions that those poles did not anticipate the claims or render them obvious, either alone or in combination with other references identified in the defendants’ invalidity contentions.

Resh objected that the interrogatories were not relevant and were premature. Resh argued that the defendants had not identified evidence sufficiently corroborating their contention that the poles were in public use, on sale, or otherwise public.

Legal standard

The court explained that Federal Rule of Civil Procedure 33 permits interrogatories seeking matters discoverable under Rule 26(b). Rule 26(b) allows discovery of nonprivileged information relevant to a claim or defense and proportional to the needs of the case. Rule 33 also permits contention interrogatories—questions about a party’s legal or factual positions—and allows a court to delay answers in appropriate circumstances.

The court noted that contention interrogatories may be answered after substantial discovery or when answers would meaningfully clarify the issues, narrow the dispute, or facilitate early resolution. The court said these considerations must be applied case by case.

Court’s analysis

The court rejected Resh’s argument that the requested discovery was irrelevant. Because the defendants had identified the two poles as invalidating prior art in their invalidity contentions, the poles were at issue as part of the defendants’ defense to Resh’s infringement claims. Resh’s opposing positions about the poles were therefore relevant.

The court also rejected Resh’s argument that the need to corroborate oral testimony made the discovery premature. The court explained that corroboration concerns the sufficiency of evidence for proving public use on the merits. That requirement did not prevent defendants from seeking discovery of other evidence relevant to whether the poles qualify as invalidating prior art. The defendants did not have to establish a preliminary case of invalidity before obtaining discovery of Resh’s positions.

The court further observed that the sufficiency of corroborating evidence is evaluated under a totality-of-the-circumstances approach and may present a question for the jury. The requested discovery could bear on that analysis. Resh did not argue that it lacked enough opportunity to develop its positions, and the opinion states that Resh had known about both poles for more than a year and had an opportunity to examine them. Resh had also partially answered the interrogatories by explaining its position that, without corroboration, the defendants could not show that the poles qualified as prior art.

Disposition

The court concluded that Interrogatories Nos. 1 and 2 sought relevant evidence and were not premature. It ordered Resh to serve supplemental responses no later than December 14, 2022. The order did not decide whether the A.G. Pro or Solakian pole was legally sufficient prior art or whether either pole invalidated any patent claim.