Resh, Inc v. Skimlite Manufacturing Inc

Background

Resh alleges that the defendants infringed U.S. Patent No. 11,141,852, which concerns a telescoping pole for cleaning pools. Eric Resh is the patent’s named inventor. During his January 30, 2024, deposition, he testified that, after speaking with his patent attorney, he began making drawings of the alleged invention using Microsoft Paint. He also testified that he had tried to put the pole into production and may have shown drawings to a representative of a company that had previously made nets for Resh.

The inventor apparently possessed two earlier pool poles when he made the drawings. Skimlite asked whether he had referred to or used those poles when preparing the drawings, including the drawing identified as Figure 1 of the patent. Skimlite also asked whether the patent attorney had instructed him to prepare the Microsoft Paint drawings. Resh’s counsel instructed him not to answer those questions.

Discovery Dispute

Skimlite moved to compel answers. Resh asserted the attorney-client privilege and the attorney work-product doctrine. The attorney-client privilege protects confidential communications between a lawyer and client made to obtain or provide legal advice. The work-product doctrine generally protects documents, tangible things, and compilations prepared in anticipation of litigation, especially an attorney’s legal strategies and mental impressions.

The court applied Federal Circuit law because the privilege dispute implicated the patent-law issue of invalidity. Resh, as the party asserting the privilege and protection, had the burden of showing that they applied.

Court’s Analysis

The court held that the questions did not require disclosure of communications with an attorney. The fact that the inventor began preparing the drawings after communicating with his patent attorney, or that the drawings might have appeared in a draft patent application or another communication to the attorney, did not prevent questions about whether and how the inventor referred to earlier pool poles.

The court distinguished the authority cited by Resh, which protected an invention record sent to a corporate legal department to begin patent prosecution. Resh conceded that the drawings themselves were discoverable. The court therefore concluded that Skimlite could ask how the drawings were made and whether the inventor used or referred to prior art in preparing them, while it could not obtain privileged invention records or other communications made to the patent attorney for patent prosecution.

The court also rejected work-product protection. Nothing in the record suggested that the drawings were prepared in anticipation of litigation, and the court found no basis for applying work-product protection generally to patent-prosecution activities.

Rulings

The court ordered Resh to produce Eric Resh for a further deposition to answer Skimlite’s questions about how he prepared the drawings, including the specific questions quoted in the order. The further deposition had to occur within 14 days of the order unless the parties agreed to another date.

In a separate administrative motion, Skimlite sought to seal two pages of the deposition because Resh had designated them “highly confidential—attorneys’ eyes only” under the protective order. Resh did not timely file the required request to seal. The court denied that administrative motion.

Magistrate Judge Virginia K. DeMarchi issued and signed the order.