1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 RESH, INC, Case No. 22-cv-01427-EJD (VKD)
9 Plaintiff, ORDER RE FEBRUARY 13, 2024 10 v. DISCOVERY DISPUTE; ADMINISTRATIVE MOTION TO 11 BARRETT CONRAD, et al., SEAL 12 Defendants. Re: Dkt. Nos. 95, 96
13 14 Plaintiff Resh, Inc. (“Resh”) and defendants Robert Conrad, Inc. (“Skimlite”), Barrett 15 Conrad, and James Conrad ask the Court to resolve their dispute concerning certain questions the 16 named inventor was instructed by counsel not to answer during his deposition. Dkt. No. 95. The 17 Court finds this dispute suitable for resolution without oral argument. Civil L.R. 7-1(b). 18 For the reasons explained below, the Court orders Resh to produce the named inventor for 19 further deposition to answer Skimlite’s questions regarding how he prepared the drawings of the 20 alleged invention.1 21 I. BACKGROUND 22 In this action, Resh alleges that defendants infringe its U.S. Patent No. 11,141,852, which 23 is directed to a telescoping pole for cleaning pools. Dkt. No. 1 ¶ 24, Ex. A. Eric Resh is the 24 1 Along with this joint discovery dispute letter, Skimlite filed an administrative motion to consider 25 whether another party’s material should be sealed regarding two pages of Mr. Resh’s deposition. See Dkt. No. 96. In it, Skimlite represents that these pages contain information designated by 26 Resh as “highly confidential—attorneys’ eyes only” under the parties’ stipulated protective order. Id. at 2. Resh has not filed a timely statement or declaration requesting this material be sealed, as 27 required by Civil Local Rule 79-5(f)(3). Accordingly, the Court denies the administrative motion 1 named inventor of the ’852 patent. Id. Defendant Skimlite took Mr. Resh’s deposition on January 2 30, 2024. Dkt. No. 95-1. During the deposition, Mr. Resh testified that “after [he] talked to [his] 3 patent attorney,” he “started making drawings” of the alleged invention using the Microsoft Paint 4 software program. Id. (Resh dep. 55:2-56:5). Mr. Resh explained that he has been unable to find 5 the drawings he made. Id. (Resh dep. 56:10-22). 6 Mr. Resh testified that after he filed an application for a patent on the alleged invention, he 7 took steps to put the pole “into production.” Id. (Resh dep. 64:14-22). As part of that effort, Mr. 8 Resh testified that he showed the drawings he had made using Microsoft Paint to a representative 9 of a company that had previously made nets for Resh, although at a different point in his 10 testimony he seemed to say he was not sure whether he had shown those drawings or other 11 drawings to the representative. See id. (Resh dep. 64:25-66:25; 72:19-21). 12 Apparently, Mr. Resh had two prior art pool poles in his possession at the time he made the 13 drawings of his alleged invention. See Dkt. No. 95 at 1. He was asked a series of question 14 regarding whether and how he used the prior art poles in preparing the drawings. Resh’s counsel 15 instructed him not to answer the following questions: 16 “Q. Did you refer to them [i.e. the prior art poles] when you were working on your drawings of your idea?’ 17 18 “Q. Did you use the Shure or Mr. Longarm poles [as references] when you were making your MS Paint drawings?” 19 “Q. And when you were making the drawing in Figure 1 [of the ’852 20 patent],did you use [the Mr. Longarm pole] as a reference?” 21 22 Dkt. No. 95-1 (Resh dep.61:15-16; 62:19-21; 72:3-4). In addition, when Skimlite’s counsel asked 23 whether his patent attorney had instructed him to prepare the Microsoft Paint drawings of the 24 alleged invention, Rush’s counsel instructed Mr. Resh not to answer that question. Id. (Resh dep. 25 62:13-14). 26 Skimlite moves to compel Mr. Resh’s answers to these questions. Resh objects that the 27 questions seek disclosure of information protected by the attorney-client privilege and the attorney 1 II. LEGAL STANDARD 2 The parties do not directly address whether the Court should apply Federal Circuit law or 3 Ninth Circuit law.2 Here, the dispute concerns drawings of the alleged invention made by an 4 inventor. Neither party explains how the unanswered questions regarding Mr. Resh’s access to 5 and use of prior art poles in preparing these drawings are relevant to any claim or defense. 6 However, the Court understands from the pleadings and from prior discovery disputes that 7 defendants contend that the two prior art poles anticipate the asserted claims of the ’852 patent. 8 See, e.g., Dkt. No. 41. Because a determination of the applicability of the attorney-client privilege 9 and the attorney work product doctrine implicates the substantive patent law issue of invalidity, 10 the Court concludes that Federal Circuit law applies. See In re Spalding Sports Worldwide, Inc., 11 203 F.3d 800, 803-04 (2000) (applying Federal Circuit law to the question of whether attorney- 12 client privilege protects invention records relevant to the issue of inequitable conduct). 13 The attorney-client privilege protects from discovery a client’s confidential 14 communications to an attorney for the purpose of obtaining legal advice, as well an attorney’s 15 confidential communications to a client for the purpose of providing legal advice. In re Spalding, 16 203 F.3d at 805 (citing Upjohn Co. v. United States, 449 U.S. 383, 390, 396 (1981)). The rule is 17 no different in the Ninth Circuit. See United States v. Ruehle, 583 F.3d 600, 607 (9th Cir. 2009). 18 “The work-product doctrine protects from discovery documents, tangible things, or compilations 19 of materials that were prepared in anticipation of litigation by a party or its representative.” 20 Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350, 1362 (Fed. Cir. 2017) (citing United States v. 21 Richey, 632 F.3d 559, 567 (9th Cir. 2011)); see also Fed. R. Civ. P. 26(b)(3). Typically, the 22 doctrine provides qualified protection against discovery of the legal strategies and mental 23 impressions of a party’s attorney. Upjohn, 449 U.S. at 390-91; Hickman v. Taylor, 329 U.S. 495, 24 508-10 (1947). 25 2 Skimlite argues that the matter can be decided “under the basic tenants of privilege law,” 26 including principles of waiver. See Dkt. No. 95 at 3. Resh appears to rely exclusively on Federal Circuit law. See id. at 7-8 (citing In re Spalding Sports Worldwide, Inc., 203 F.3d 800 (Fed. Cir. 27 2000) and McCook Metals LLC v. Alcoa Inc., 192 F.R.D. 242 (N.D. Ill. 2000) (applying In re 1 As the party asserting attorney-client privilege and work product protection, Resh bears the 2 burden of proving that the privilege or protection applies. 3 III. DISCUSSION 4 Resh appears to argue that because the inventor, Mr. Resh, began preparing drawings only 5 after communicating with his patent attorney (and at that attorney’s direction),3 he may not be 6 questioned about how he prepared those drawings. Resh cites no authority for this position. None 7 of the questions quoted above requires the disclosure of any communications with an attorney, so 8 the attorney-client privilege does not apply.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 RESH, INC, Case No. 22-cv-01427-EJD (VKD)
9 Plaintiff, ORDER RE FEBRUARY 13, 2024 10 v. DISCOVERY DISPUTE; ADMINISTRATIVE MOTION TO 11 BARRETT CONRAD, et al., SEAL 12 Defendants. Re: Dkt. Nos. 95, 96
13 14 Plaintiff Resh, Inc. (“Resh”) and defendants Robert Conrad, Inc. (“Skimlite”), Barrett 15 Conrad, and James Conrad ask the Court to resolve their dispute concerning certain questions the 16 named inventor was instructed by counsel not to answer during his deposition. Dkt. No. 95. The 17 Court finds this dispute suitable for resolution without oral argument. Civil L.R. 7-1(b). 18 For the reasons explained below, the Court orders Resh to produce the named inventor for 19 further deposition to answer Skimlite’s questions regarding how he prepared the drawings of the 20 alleged invention.1 21 I. BACKGROUND 22 In this action, Resh alleges that defendants infringe its U.S. Patent No. 11,141,852, which 23 is directed to a telescoping pole for cleaning pools. Dkt. No. 1 ¶ 24, Ex. A. Eric Resh is the 24 1 Along with this joint discovery dispute letter, Skimlite filed an administrative motion to consider 25 whether another party’s material should be sealed regarding two pages of Mr. Resh’s deposition. See Dkt. No. 96. In it, Skimlite represents that these pages contain information designated by 26 Resh as “highly confidential—attorneys’ eyes only” under the parties’ stipulated protective order. Id. at 2. Resh has not filed a timely statement or declaration requesting this material be sealed, as 27 required by Civil Local Rule 79-5(f)(3). Accordingly, the Court denies the administrative motion 1 named inventor of the ’852 patent. Id. Defendant Skimlite took Mr. Resh’s deposition on January 2 30, 2024. Dkt. No. 95-1. During the deposition, Mr. Resh testified that “after [he] talked to [his] 3 patent attorney,” he “started making drawings” of the alleged invention using the Microsoft Paint 4 software program. Id. (Resh dep. 55:2-56:5). Mr. Resh explained that he has been unable to find 5 the drawings he made. Id. (Resh dep. 56:10-22). 6 Mr. Resh testified that after he filed an application for a patent on the alleged invention, he 7 took steps to put the pole “into production.” Id. (Resh dep. 64:14-22). As part of that effort, Mr. 8 Resh testified that he showed the drawings he had made using Microsoft Paint to a representative 9 of a company that had previously made nets for Resh, although at a different point in his 10 testimony he seemed to say he was not sure whether he had shown those drawings or other 11 drawings to the representative. See id. (Resh dep. 64:25-66:25; 72:19-21). 12 Apparently, Mr. Resh had two prior art pool poles in his possession at the time he made the 13 drawings of his alleged invention. See Dkt. No. 95 at 1. He was asked a series of question 14 regarding whether and how he used the prior art poles in preparing the drawings. Resh’s counsel 15 instructed him not to answer the following questions: 16 “Q. Did you refer to them [i.e. the prior art poles] when you were working on your drawings of your idea?’ 17 18 “Q. Did you use the Shure or Mr. Longarm poles [as references] when you were making your MS Paint drawings?” 19 “Q. And when you were making the drawing in Figure 1 [of the ’852 20 patent],did you use [the Mr. Longarm pole] as a reference?” 21 22 Dkt. No. 95-1 (Resh dep.61:15-16; 62:19-21; 72:3-4). In addition, when Skimlite’s counsel asked 23 whether his patent attorney had instructed him to prepare the Microsoft Paint drawings of the 24 alleged invention, Rush’s counsel instructed Mr. Resh not to answer that question. Id. (Resh dep. 25 62:13-14). 26 Skimlite moves to compel Mr. Resh’s answers to these questions. Resh objects that the 27 questions seek disclosure of information protected by the attorney-client privilege and the attorney 1 II. LEGAL STANDARD 2 The parties do not directly address whether the Court should apply Federal Circuit law or 3 Ninth Circuit law.2 Here, the dispute concerns drawings of the alleged invention made by an 4 inventor. Neither party explains how the unanswered questions regarding Mr. Resh’s access to 5 and use of prior art poles in preparing these drawings are relevant to any claim or defense. 6 However, the Court understands from the pleadings and from prior discovery disputes that 7 defendants contend that the two prior art poles anticipate the asserted claims of the ’852 patent. 8 See, e.g., Dkt. No. 41. Because a determination of the applicability of the attorney-client privilege 9 and the attorney work product doctrine implicates the substantive patent law issue of invalidity, 10 the Court concludes that Federal Circuit law applies. See In re Spalding Sports Worldwide, Inc., 11 203 F.3d 800, 803-04 (2000) (applying Federal Circuit law to the question of whether attorney- 12 client privilege protects invention records relevant to the issue of inequitable conduct). 13 The attorney-client privilege protects from discovery a client’s confidential 14 communications to an attorney for the purpose of obtaining legal advice, as well an attorney’s 15 confidential communications to a client for the purpose of providing legal advice. In re Spalding, 16 203 F.3d at 805 (citing Upjohn Co. v. United States, 449 U.S. 383, 390, 396 (1981)). The rule is 17 no different in the Ninth Circuit. See United States v. Ruehle, 583 F.3d 600, 607 (9th Cir. 2009). 18 “The work-product doctrine protects from discovery documents, tangible things, or compilations 19 of materials that were prepared in anticipation of litigation by a party or its representative.” 20 Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350, 1362 (Fed. Cir. 2017) (citing United States v. 21 Richey, 632 F.3d 559, 567 (9th Cir. 2011)); see also Fed. R. Civ. P. 26(b)(3). Typically, the 22 doctrine provides qualified protection against discovery of the legal strategies and mental 23 impressions of a party’s attorney. Upjohn, 449 U.S. at 390-91; Hickman v. Taylor, 329 U.S. 495, 24 508-10 (1947). 25 2 Skimlite argues that the matter can be decided “under the basic tenants of privilege law,” 26 including principles of waiver. See Dkt. No. 95 at 3. Resh appears to rely exclusively on Federal Circuit law. See id. at 7-8 (citing In re Spalding Sports Worldwide, Inc., 203 F.3d 800 (Fed. Cir. 27 2000) and McCook Metals LLC v. Alcoa Inc., 192 F.R.D. 242 (N.D. Ill. 2000) (applying In re 1 As the party asserting attorney-client privilege and work product protection, Resh bears the 2 burden of proving that the privilege or protection applies. 3 III. DISCUSSION 4 Resh appears to argue that because the inventor, Mr. Resh, began preparing drawings only 5 after communicating with his patent attorney (and at that attorney’s direction),3 he may not be 6 questioned about how he prepared those drawings. Resh cites no authority for this position. None 7 of the questions quoted above requires the disclosure of any communications with an attorney, so 8 the attorney-client privilege does not apply. The fact that the drawings may have appeared in a 9 draft patent application, or in another communication to an attorney, who then used them to 10 prepare a patent application, does not insulate an inventor from questions about whether and how 11 he may have referred to prior art in documenting his alleged invention. 12 Spalding is not to the contrary. In that case, the Federal Circuit held that an “invention 13 record,”4 which was sent to a corporate legal department for purposes of initiating patent 14 prosecution, was “a communication made for the purpose of obtaining legal advice,” and therefore 15 the invention record itself was protected from disclosure by the attorney-client privilege. In re 16 Spalding, 203 F.3d at 805-06. Here, Resh concedes that the drawings themselves are 17 discoverable. See Dkt. No. 95 at 7. Thus, while Skimlite may not obtain discovery of any 18 invention record or other communication made to Resh’s patent attorney for purposes of 19 prosecuting the patent, Skimlite may properly inquire about how the drawings of the invention 20 were made and whether the inventor used or referenced the prior art in making the drawings in 21 question. See Vasudevan Software, Inc. v. Int’l Bus. Machines Corp., No. C 09-05897 RS (PSG), 22 3 It is unclear why Resh’s counsel instructed Mr. Resh not to answer when he was asked whether 23 his patent attorney instructed him to prepare the drawings, see Dkt. No. 95-1 (Resh dep. 62:13- 17), as Resh purports to provide an answer to that question in the joint discovery dispute 24 submission, see Dkt. No. 95 at 6.
25 4 As the Spalding court explained, “[i]nvention records are standard forms generally used by corporations as a means for inventors to disclose to the corporation’s patent attorneys that an 26 invention has been made and to initiate patent action. They are usual short documents containing space for such information as names of inventors, description and scope of invention, closest prior 27 art, first date of conception and disclosure to others, dates of publication, etc.” In re Spalding, 203 1 2011 WL 1599646, at *2 (N.D. Cal. Apr. 27, 2011) (“Spalding does not insulate otherwise 2 || discoverable information simply because it is included in a privileged communication. The 3 decision merely clarified that privileged communications themselves . . . are not discoverable even 4 || if the subject matter of the communication is discoverable.”). 5 To the extent Resh contends that because a patent attorney directed Mr. Resh to prepare 6 || drawings of the alleged invention, the attorney work product doctrine insulates Mr. Resh from 7 || responding to Skimlite’s question, Resh is mistaken. Nothing in the record suggests that the 8 drawings were prepared in anticipation of litigation. Resh cites no authority for the proposition 9 that work product protection applies generally to all patent prosecution activities. Indeed, the 10 || prevailing authority is to the contrary. See Mardiros v. City of Hope, No. 2:19-cv-02196 MCS 11 MAA, 2021 WL 3126987, at *2 (C.D. Cal. June 3, 2021); In re Gabapentin Patent Litigation, 214 12 F.R.D. 178, 184 (D.N.J. 2003); McCook Metals LLC v. Alcoa Inc., 192 F.R.D. 242, 259-61 (N.D. 5 13 Ill. 2000). Thus, the attorney work product doctrine does not apply. 14 || Iv. CONCLUSION 15 The questions Skimlite posed to Mr. Resh in deposition, and which he was instructed not 16 || to answer, do not seek discovery of information protected by the attorney-client privilege or the 3 17 attorney work product doctrine. Accordingly, they must be answered. Resh must produce Mr. 18 || Resh for a further deposition to answer Skimlite’s questions regarding how he prepared the 19 || drawings of the alleged invention, including the specific questions quoted above. Mr. Resh’s 20 || further deposition shall occur within 14 days of this order, unless the parties agree to a different 21 date. 22 IT IS SO ORDERED. 23 Dated: February 23, 2024 24 .
6 VIRGINIA K. DEMARCHI United States Magistrate Judge 27 28