Resh, Inc v. Skimlite Manufacturing Inc

Background

Skimlite sought permission under Patent Local Rule 3-6 to amend its invalidity contentions—the required explanations of why the asserted patent claims are allegedly invalid. Skimlite wanted to add an obviousness-type double-patenting theory based on the Federal Circuit’s August 2023 decision in In re: Cellect, LLC. Skimlite argued that the decision represented a change in the law concerning patents in the same family that have different expiration dates because of different patent-term adjustments.

Resh opposed the motion. In the alternative, Resh asked the court to wait until the Federal Circuit decided whether to rehear In re: Cellect as a full court. Resh argued that adding the new invalidity theory would prejudice it, but it did not argue that the amendment would interfere with its ability to develop evidence or arguments. At the hearing, Resh acknowledged that the amendment would not delay or interfere with the case’s proceedings.

Court’s analysis

Under Patent Local Rule 3-6, a party may amend invalidity contentions with the court’s permission after a timely showing of good cause. The court considers the moving party’s diligence and whether the opposing party would suffer prejudice.

The court found that Skimlite acted diligently. After the Federal Circuit issued In re: Cellect, Skimlite notified Resh within two weeks that it intended to seek permission to amend and promptly filed its motion after learning that Resh opposed the amendment. The court also found that Resh’s claimed prejudice was limited to the possible effect of the new theory on the merits, rather than any inability to prepare evidence or arguments. Because Resh acknowledged that the amendment would not delay or interfere with the case, the court found good cause to permit it.

The court declined to defer its decision while the Federal Circuit potentially considered rehearing. It stated that the Federal Circuit might or might not rehear the case and that the result of any such proceeding was speculative.

Disposition

The court granted Skimlite’s motion for leave to amend its invalidity contentions. It also declined Resh’s request to defer the decision pending possible rehearing in In re: Cellect. The order addressed permission to amend the litigation contentions; it did not decide whether Skimlite’s new invalidity theory would ultimately succeed.