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 OCTOBER 28, 2022

10 v. DISCOVERY DISPUTE

11 SKIMLITE MANUFACTURING INC, et Re: Dkt. No. 41 al., 12 Defendants.

13 14 Defendants Skimlite Manufacturing, Inc. (“Skimlite”), Barrett Conrad, and James Conrad 15 ask the Court to order plaintiff Resh, Inc. (“Resh”) to respond to Skimlite’s Interrogatories Nos. 1 16 and 2. Dkt. No. 41. The Court finds this dispute suitable for resolution without oral argument. 17 Civil L.R. 7-1(b). 18 For the reasons explained below, the Court orders Resh to provide substantive responses to 19 the interrogatories. 20 I. BACKGROUND 21 In this action, Resh alleges that all defendants infringe its U.S. Patent No. 11,141,852, 22 which is directed to a telescoping pole for cleaning pools. Dkt. No. 1 ¶ 24, Ex. A. As required by 23 this Court’s Patent Local Rules and the operative scheduling order, the parties have exchanged 24 infringement and invalidity contentions. Dkt. No. 41 at 1; see Dkt. No. 26 at 2. 25 In their invalidity contentions, defendants identified two physical pool poles, the A.G. Pro 26 pole and the Solakian pole, as prior art to the asserted claims of the ’852 patent under 35 U.S.C. 27 § 102. Dkt. No. 41 at 2. During discovery, defendant Skimlite served two interrogatories Interrogatory No. 1: Describe the complete factual and legal bases 1 for Your contention that the A.G. Pro pole does not anticipate the 2 Asserted Claims or render the Asserted Claims obvious alone or in combination with references identified in Appendix A to Skimlite’s 3 Invalidity Contentions.

4 Interrogatory No. 2: Describe the complete factual and legal bases for Your contention that the Solakian pole does not anticipate the 5 Asserted Claims or render the Asserted Claims obvious alone or in 6 combination with references identified in Appendix A to Skimlite’s Invalidity Contentions. 7 8 Dkt. No. 41-1 at 5. Resh objected to both interrogatories as not relevant and premature. Dkt. No. 9 41-2 at 6. 10 II. LEGAL STANDARD 11 A party may serve an interrogatory to obtain discovery of “any matter that may be inquired 12 into under Rule 26(b)” of the Federal Rules of Civil Procedure. Fed. R. Civ. P. 33(a)(2). Rule 13 26(b) permits discovery regarding “any nonprivileged matter that is relevant to any party's claim 14 or defense and proportional to the needs of the case, considering the importance of the issues at 15 stake in the action, the amount in controversy, the parties’ relative access to relevant information, 16 the parties’ resources, the importance of the discovery in resolving the issues, and whether the 17 burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 18 26(b)(1). 19 In responding to an interrogatory, a party must answer “separately and fully” to the extent 20 the interrogatory is not objected to. Fed. R. Civ. P. 33(b)(3). Any grounds for objection must be 21 stated with specificity. Fed. R. Civ. P. 33(b)(4). “An interrogatory is not objectionable merely 22 because it asks for an opinion or contention that relates to fact or the application of law to fact, but 23 the court may order that the interrogatory need not be answered until designated discovery is 24 complete, or until a pretrial conference or some other time.” Fed. R. Civ. P. 33(a)(2). As a 25 general matter, a party may obtain answers to contention interrogatories after substantial discovery 26 is completed or if it shows that obtaining answers now would contribute meaningfully to: “(1) 27 clarifying the issues in the case; (2) narrowing the scope of the dispute; (3) setting up early 1 In re eBay Seller Antitrust Litig., No. 07-1882 JF (RS), 2008 WL 5212170, at *1 (N.D. Cal. Dec. 2 11, 2008) (citing In re Convergent Techs. Sec. Litig., 108 F.R.D. 328, 338-39 (N.D. Cal. 1985)). 3 These guidelines must not be employed rigidly; the Court must make a determination on a case- 4 by-case basis. Id. 5 III. DISCUSSION 6 Resh argues that it should not be required to answer Skimlite’s Interrogatories Nos. 1 and 2 7 because defendants have not yet identified any evidence sufficiently corroborating their contention 8 that the A.G. Pro and Solakian poles are prior art. Dkt. No. 1 at 3. Resh argues that the discovery 9 Skimlite seeks is not relevant to any claim or defense unless and until defendants identify evidence 10 other than the oral testimony of a witness showing that the poles were in public use, or on sale, or 11 otherwise public. Id. at 3-5.1 Defendants acknowledge that whether the poles qualify as prior art 12 is a disputed issue in the case, but argue that they should not be precluded from obtaining 13 discovery of Resh’s other positions with respect to this alleged prior art (if Resh has any other 14 positions) while they continue to develop evidence concerning this disputed issue. Id. at 2. 15 The Court is not persuaded by Resh’s argument that the discovery sought in these two 16 interrogatories is not relevant to any claim or defense. Having identified the poles as invalidating 17 prior art in their invalidity contentions, defendants clearly have put these poles at issue as part of 18 their defense to Resh’s infringement claims, and discovery of Resh’s opposing positions is 19 relevant to this invalidity defense. 20 Resh misapprehends the role of the corroboration requirement for oral testimony. While 21 Resh is correct that “[g]enerally, oral testimony of prior public use must be corroborated in order 22 to invalidate a patent,” that rule reflects concern about the sufficiency of such evidence for proving 23 prior public use on the merits. See, e.g., Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 24 737-38, 741-743 (Fed. Cir. 2002) (discussing clear and convincing standard for proving invalidity; 25 discussing authority regarding sufficiency of oral testimony). Defendants ultimately may not be 26 able to sustain their burden of proof on summary judgment or at trial that these two pool poles 27 1 qualify as prior art. However, the corroboration requirement is not a bar to obtaining discovery of 2 other evidence that may also be pertinent to the question of whether these poles are invalidating 3 prior art. Defendants are not required to establish a prima facie case of invalidity, or any 4 particular element of their invalidity defense, before obtaining discovery of Resh’s opposing 5 positions. See, e.g., Apple Inc. v. Wi-LAN Inc., No. 14-cv-2235-DMS (BLM), 2018 WL 733740, 6 at *5 (S.D. Cal. Feb. 6, 2018). Resh cites no authority to the contrary. 7 Moreover, “[a]ssessing the sufficiency of evidence which corroborates a witness’s 8 testimony concerning invalidating activities has been analyzed under the ‘rule of reason’ test, and 9 it is a jury question.” Adenta GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1372 (Fed. Cir. 2007) 10 (citing Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998)). “A 11 ‘rule of reason’ analysis involves an assessment of the totality of the circumstances including an 12 evaluation of all pertinent evidence.” Id. “Importantly, this analysis ‘does not require that every 13 detail of the testimony be independently and conclusively supported’ by the corroborating 14 evidence.” TransWeb, LLC v. 3M Innovative Properties Co., 812 F.3d 1295, 1301-02 (Fed. Cir. 15 2016) (quoting Ohio Willow Wood Co. v. Alps South, 735 F.3d 1333, 1348 (Fed. Cir. 2013)). The 16 discovery defendants seek may also bear on the totality of the circumstances that inform the “rule 17 of reason” analysis. 18 Although Resh says that Skimlite’s Interrogatories Nos. 1 and 2 are “premature,” it does 19 not argue that it has had insufficient opportunity to develop its contrary positions or is otherwise 20 unable to provide the factual and legal bases for those positions. See Dkt. No. 41 at 3-5. Resh 21 does not dispute that defendants disclosed both of the poles in their invalidity contentions, or that 22 it has known of both poles for over a year and has had an opportunity to examine them. See id. at 23 2, 3. Resh acknowledges that the Solakian pole was submitted to the Patent Office during its 24 prosecution of the underlying patent applications and that the A.G. Pro pole is discussed at length 25 in Resh’s own complaint. Id. at 3. While discovery in this matter is not yet complete, substantial 26 investigation and discovery of these two poles appears to have already occurred. See, e.g., 27 Rubalcava v. City of San Jose, No. 20-cv-04191 BLF (VKD), 2022 WL 2668379, at *3 (N.D. Cal. 1 dispute regarding contention interrogatories). 2 Resh has already partially answered the disputed interrogatories by describing the legal 3 bases for its position that, without corroboration, defendants cannot show that the A.G. Pro and 4 Solakian poles qualify as prior art. Dkt. No. 41-2 at 6. Requiring Resh to disclose the factual and 5 legal bases for any other reasons it contends these poles do not anticipate or render obvious any 6 || asserted claim of the ’852 patent will clarify, and may even narrow, the scope of the parties’ 7 dispute concerning defendants’ invalidity contentions regarding these poles. 8 || IV. CONCLUSION 9 For the reasons explained above, the Court concludes that Skimlite’s Interrogatories Nos. 1 10 || and 2 seek discovery of relevant evidence and are not premature. Resh must serve supplemental 11 responses to these interrogatories no later than December 14, 2022. 12 IT IS SO ORDERED. 5 13 Dated: November 14, 2022

14 ae 15 Unga □□ Maree 2 VIRGINIA K. DEMARCHI = 16 United States Magistrate Judge = 17 18 19 20 21 22 23 24 25 26 27 28