Resh, Inc v. Skimlite Manufacturing Inc
- Edward Davila
- 5:22-cv-01427
- U.S. District Court · Northern District of California
- 3
In Resh v. Skimlite, Judge DeMarchi ordered review of disputed drawings and held the work-product doctrine did not apply.
Resh, Inc.; Robert Conrad, Inc. (identified in the opinion as Skimlite); Barrett Conrad; and James Conrad, because the order governs discovery of Document 10209 and the asserted privilege protections.
What happened
Resh, Inc. and defendants Robert Conrad, Inc. (identified as Skimlite), Barrett Conrad, and James Conrad disputed whether Resh could withhold MS Paint drawings made by inventor Eric Resh. Resh claimed attorney-client privilege and work-product protection, while Skimlite requested the drawings in discovery.
The court noted that Resh had conceded the drawings were public and discoverable because they were later published in a patent application. The court also identified inconsistencies between Resh’s privilege-log description, its current arguments, and deposition testimony indicating that the drawings had been shared with third parties.
Judge Virginia K. DeMarchi ordered Resh to submit Document 10209 for private court review by March 8, 2024, to help resolve the privilege dispute. The court ruled that the work-product doctrine did not apply to the document but did not yet decide whether attorney-client privilege protected the material.
The detailed version
- Resh, Inc v. Skimlite Manufacturing Inc · No. 5:22-cv-01427
- Edward Davila
- Mar. 4, 2024
Background
This interim discovery order concerns Document 10209 in Resh’s privilege log. The entry described “Eric Resh Word/Paint documents addressed to [Resh’s attorney]” and referred to a draft patent application concerning Mr. Resh’s swimming-pool-pole inventions. Skimlite requested production of the MS Paint drawings. Resh asserted attorney-client privilege and the attorney work-product doctrine.
The court explained that Federal Circuit law governed the privilege issue. Attorney-client privilege generally protects confidential communications between a client and attorney made to obtain or provide legal advice. The work-product doctrine protects documents, tangible things, or compilations prepared in anticipation of litigation by a party or its representative.
Court’s Analysis
Resh argued that Document 10209 was a communication from Eric Resh to counsel for legal advice about patent prosecution. The court found that position difficult to reconcile with Resh’s earlier concession that the drawings were public and discoverable because they were eventually published in a patent application. The court also noted deposition testimony indicating that Mr. Resh shared the drawings with one or more third parties to put the invention into production.
The court further observed that the privilege-log entry referred to “Word/Paint documents,” suggesting multiple documents rather than one communication, and did not match Resh’s argument. Because of these discrepancies, the court determined that an in camera review—private review by the court—could be the quickest way to resolve the dispute.
Order
The court ordered Resh to submit Document 10209 for in camera review by March 8, 2024. The material was to be delivered to chambers and not filed on the public docket. The court also ruled that, for the reasons given in its earlier order concerning the deposition dispute, the work-product doctrine did not apply to Document 10209. This interim order did not resolve whether attorney-client privilege protected the disputed material after the court’s review.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.