Resh, Inc v. Skimlite Manufacturing Inc

Background

Resh, Inc. sued Skimlite Manufacturing Inc., James Conrad, and Barrett Conrad for patent infringement involving telescoping swimming-pool poles. Resh’s patent, U.S. Patent No. 11,141,852, issued on October 12, 2021, and covers a “Telepole Apparatus and Related Methods.” The complaint alleged that Skimlite’s “SnapLite” poles used technology infringing Resh’s patent.

The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which addresses failure to state a legally sufficient claim, and Rule 12(b)(3), which addresses improper venue. They also moved to strike paragraphs 140–222 under Rule 12(f) as immaterial. The complaint was 213 pages long.

Generalized allegations against the defendants

The complaint often used “Defendants” as a collective term rather than identifying which defendant allegedly took which action. Resh argued that the court could use common sense because Skimlite could act only through people, including James and Barrett Conrad. Resh did not assert an alter-ego or veil-piercing theory.

The court held that this type of collective pleading did not provide adequate notice under Rule 8. It granted the motion on this ground and dismissed the generalized allegations with leave to amend. Any amended complaint must identify the actions attributable to each defendant rather than relying on generalized allegations against all defendants.

James Conrad

James Conrad sought dismissal of the infringement allegations against him personally. The complaint described conduct attributed to him in 2012 and 2018, including his exposure to Resh’s prototype, his display of an allegedly infringing product at trade shows, and his signature on a patent application. The court noted that a patent cannot be infringed before it issues, although federal law may allow certain pre-issuance damages.

The court found that the complaint did not allege that James Conrad personally engaged in potentially infringing conduct after the patent issued on October 12, 2021. It therefore held that Resh failed to state an infringement claim against him in his individual capacity. The court dismissed the complaint against James Conrad with leave to amend.

Barrett Conrad and venue

Barrett Conrad sought dismissal because the complaint did not identify specific infringing acts by him. He also argued that venue was improper because he had been a Florida resident since October 2021. The complaint referred to May 2020 videos involving an allegedly infringing pole.

The court found that the allegations did not involve conduct during the patent term and therefore failed to state an infringement claim against Barrett Conrad personally. It also found that venue was not proper under either available basis in the patent venue statute: residence in the district, or acts of infringement in the district combined with a regular and established place of business there. The court granted Barrett Conrad’s motion and dismissed the complaint against him with leave to amend.

The court denied Resh’s request for discovery about Barrett Conrad’s residence, finding no support for the claim that discovery would produce a different result.

Request for a declaration that the patent is not invalid

Resh’s complaint requested a judgment declaring that the ’852 patent was “not invalid.” Resh said it was not seeking a validity declaration but wanted to force the defendants to disclose evidence concerning an alleged prior-art product.

The court held that a patent holder does not have an affirmative right to obtain a declaration confirming patent validity because patents are presumed valid. It granted the defendants’ motion as to this request and dismissed the request without leave to amend.

Paragraphs 140–222

The defendants moved to strike paragraphs 140–222 because they primarily discussed an anticipated invalidity defense involving the “A.G. Pro Pole” and included extensive legal arguments, evidence, and discussion of pre-suit negotiations. Resh argued that the material was needed for discovery and might support claims for fees, costs, and enhanced damages.

The court found that the paragraphs were immaterial surplusage at the pleading stage because they attempted to anticipate and defeat a possible affirmative defense. It granted the motion to strike paragraphs 140–222 without prejudice to reasserting the arguments and evidence in later motion practice beyond the pleadings stage. The paragraphs were stricken without leave to amend, although Resh could re-allege facts from them to support its affirmative claims rather than to anticipate a defense.

Disposition

The court granted the defendants’ motion as follows: the generalized allegations were dismissed with leave to amend; the complaint was dismissed with leave to amend as to James Conrad and Barrett Conrad; the request for a declaration that the ’852 patent was not invalid was dismissed without leave to amend; and paragraphs 140–222 were stricken without leave to amend and without prejudice. Any amended complaint was due within 21 days after entry of the order. Judge Edward J. Davila issued the order on March 31, 2023.