Case 1:17-cv-00685-PLM-PJG ECF No. 27 filed 02/01/18 PageID.

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UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

DANIEL R. MORREN, SR., )

Plaintiff, )
) No. 1:17–cv–685
-v- )
) Honorable Paul L. Maloney
MORREN PLASTIC MOLDING, INC. )
and TWIN BAY DOCKS, INC., )
Defendants. )
)

OPINION AND ORDER DENYING WITHOUT PREJUDICE MOTION FOR

SUMMARY JUDGMENT

This is a patent infringement lawsuit for a design patent. Plaintiff Daniel Morren

applied for a design patent on December 17, 2009. The design is a diamond-shaped pattern

for dock flooring. The United States Patent and Trademark Office issued Plaintiff his patent,

Number D 615,671 on May 11, 2010. Defendants' pending motion for summary judgment

(ECF No. 14), which raises the "on-sale" doctrine as a defense to the validity of the patent,

was filed before a case management order issued and before the parties began discovery.

Because Defendants' evidence on the present record does not meet the high "clear and

convincing" standard required by the doctrine, the motion will be denied.

I.

Summary judgment is appropriate only if the pleadings, depositions, answers to

interrogatories and admissions, together with the affidavits, show there is no genuine issue of

material fact and that the moving party is entitled to a judgment as a matter of law. Fed. R.

Civ. P. 56(a) and (c); Payne v. Novartis Pharms. Corp., 767 F.3d 526, 530 (6th Cir. 2014).
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The burden is on the moving party to show that no genuine issue of material fact exists, but

that burden may be discharged by pointing out the absence of evidence to support the

nonmoving party=s case. Fed. R. Civ. P. 56(c)(1); Holis v. Chestnut Bend Homeowners

Ass=n, 760 F.3d 531, 543 (6th Cir. 2014). The facts, and the inferences drawn from them,

must be viewed in the light most favorable to the nonmoving party. Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 255 (1986) (quoting Matsushita Elec. Indust. Co. v. Zenith Radio

Corp., 475 U.S. 574, 587 (1986)). Once the moving party has carried its burden, the

nonmoving party must set forth specific facts in the record showing there is a genuine issue

for trial. Matsushita, 475 U.S. at 574; Jakubowski v. Christ Hosp., Inc., 627 F.3d 195, 200

(6th Cir. 2010) (AAfter the moving party has met its burden, the burden shifts to the

nonmoving party, who must present some >specific facts showing that there is a genuine issue

for trial.=@) (quoting Anderson, 477 U.S. at 248). In resolving a motion for summary

judgment, the court does not weigh the evidence and determine the truth of the matter; the

court determines only if there exists a genuine issue for trial. Tolan v. Cotton, 134 S.Ct.

1861, 1866 (2014) (quoting Anderson, 477 U.S. at 249). The question is Awhether the

evidence presents a sufficient disagreement to require submission to the jury or whether it is

so one-sided that one party must prevail as a matter of law.@ Anderson, 477 U.S. at 251-252.

II.

In this lawsuit, Plaintiff asserts Defendants have infringed his design patent. Plaintiff

alleges Defendants created a mold incorporating his patented design and have been

manufacturing and selling dock parts that include his design. Plaintiff alleges he has not been

paid for the use of his design. Plaintiff further alleges that Defendants do not have a license

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to use his design. Defendants assert that the patent is invalid because the invention, or rather

products incorporating the patented design, were offered for sale more than one year before

Plaintiff applied for his patent.

Defendants claim Plaintiff's patent is invalid under the on-sale doctrine. Specifically,

there was an offer to sell or an agreement to sell products containing Plaintiff's design more

than one year before Plaintiff applied for his patent. "Section 102(b) of the Patent Act of

1952 provides that no person is entitled to patent an 'invention' that has been 'on sale' more

than one year before filing a patent application."1 Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 57

(1998). Under the Pfaff test, the "on sale" clock begins running when two conditions are met:

(1) the invention is the subject of a commercial offer for sale, and (2) the invention is ready

for patenting. Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1047 (Fed. Cir. 2001).

When those two conditions exist, the inventor must file his or her application for a patent

within one year, or lose the right to patent the invention. Id. at 1047–48. The burden is on

the accused infringer to show, by clear and convincing evidence, that "''there was a definite

sale or offer for sale of the claimed invention prior to the critical date, defined as one year

prior to the U.S. filing date to which the application was entitled.'" Id. at 1047 (quoting Mas-

Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1216 (F3d. Cir. 1998)); see Leader Techs.,

1
In 2008 and 2009, when the relevant conduct occurred, the statute for the on sale doctrine
provided as follows:
A person shall be entitled to a patent unless - -
***
(b)the invention was patented or described in a printed publication in this or a foreign country or
in public use or on sale in this country, more than one year prior to the date of the application for
patent in the United States, . . . . 35 U.S.C. § 102.

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Inc. v. Facebook, Inc., 678 F.3d 1300, 1305 (Fed. Cir. 2012) (noting the clear and convincing

standard); Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045–46 (Fed. Cir.

2001) (same). A single sale or offer for sale more than one year prior to the critical date will

invalidate the patent. Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of Gen.

Elec. Co., 417 F.3d 1203, 1209 (Fed. Cir. 2005). Application of the on-sale bar is a question

of law based on underlying factual findings, which are reviewed for clear error. Helsinn

Healthcare, S.A. v. Teva Pharm. USA, Inc., 855 F.3d 1356, 1363 (Fed. Cir. 2017);

Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1371 (Fed. Cir. 2016) (en banc).

"'[T]he question of whether an invention is the subject of a commercial offer for sale

is a matter of Federal Circuit law, to be analyzed under the law of contracts as generally

understood.'" Hospira, 827 F.3d at 1373 (quoting Group One, 254 F.3d at 1047). Only

offers which rise "to the level of a commercial offer for sale" will trigger the on-sale doctrine.

Id. at 1378 (quoting Group One, 254 F.3d at 1048). Courts look to the Uniform

Commercial Code (UCC) to determine whether a communication or series of exchanges

amounts to a commercial offer for sale. Id. at 1373. Generally, courts should "focus on

those activities that would be understood to be commercial sales and offers for sale 'in the

commercial community.'" Id. "A sale occurs when there is a 'contract between the parties to

give and to pass rights of property for consideration which the buyer pays or promises to pay

the seller for the thing bought or sold.'" Helsinn Healthcare, 855 F.3d at 1364. And, an

offer for sale occurs when one party could make a binding contract by simple acceptance,

assuming consideration. Group One, 254 F.3d at 1048; Linear Tech, 275 F.3d at 1050 ("'An

offer is the manifestation of willingness to enter into a bargain, so made as to justify another

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person in understanding that his assent to that bargain is invited and will conclude it.'")

(quoting Restatement (Second) of Contracts, § 24 1981)).

When deciding whether a commercial offer has been made, courts should consider

the circumstances in which the statement was made, including the status of negotiations, the

language in any relevant documents, the terms of any previous inquiries, and the prior course

of dealings between the parties. Fisher-Price, Inc. v. Safety 1st, Inc., 109 F. App'x 387, 392

(Fed. Cir. 2004); see Helsinn Healthcare, 855 F.3d at 1364 (identifying factors such as the

passage of title, the confidential nature of the transaction and the absence of commercial

marketing and noting that no one factor is dispositive). Offers to sell rights in a patent, and

offers to license a patent, including production and marketing rights, are not offers that trigger

the on-sale doctrine. See Elan Corp., PLC v. Andrx Pharms., Inc., 366 F.3d 1336, 1341

(Fed. Cir. 2004) (collecting cases).

The second condition, that the invention is ready to be patented, can be satisfied by

at least two types of evidence. First, the accused infringer can show proof of reduction to

practice. Pfaff, 525 U.S. at 67. Second, the accused infringer can show that the inventor had

drawings or descriptions of the invention "that were sufficiently specific to a person skilled in

the art to practice the invention." Id. at 67–68.

In this case, the invention is a design. "A design patent only protects the novel,

ornamental features of the patented design." OddzOn Prods., Inc. v. Just Toys, Inc., 122

F.3d 1396, 1404–05 (Fed. Cir. 1997). A design patent "protects the overall ornamentation

of a design, not an aggregation of separable elements." Sport Dimension, Inc. v. Coleman

Co., Inc., 820 F.3d 1316, 1322 (Fed. Cir. 2016). For situations involving design patents, "an

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embodiment of the design" must have been sold or offered for sale. Cont'l Plastic Containers

v. Owens Brockway Plastic Prods., Inc., 141 F.3d 1073, 1077 (Fed. Cir. 1998). And, a design

invention is reduced to practice as soon as an embodiment has been constructed. Id. at

1079.

III.

Without dispute, no dock parts containing the patented design were produced or sold

more than one year prior to the date when Plaintiff filed the patent application. That

conclusion, however, does not resolve the motion.

Defendants advance two theories, both based on an agreement reached in July or

August 2008 between Morren Plastics and Twin Bay Docks. First, Defendants argue, in July

or August 2008, Morren Plastics offered to sell dock components or parts containing the

diamond design to Twin Bay. Although an agreement is not necessary for the on-sale

doctrine, Defendants argue the two companies did reach an agreement. Second, Defendants

argue that, in July or August 2008, Morren Plastics sold part ownership of a mold containing

the diamond pattern to Twin Bay.

The documents attached by Defendants to their motion establish the following facts.

Nelson Morren is the owner of Defendant Morren Plastic Molding. (ECF No. 15-1 N.

Morren Aff. ¶ 2 PageID.84.) Defendant Twin Bay Dock is currently one of Morren Plastic's

largest customers. (Id. ¶ 6 PageID.85.) Nelson Morren is the father of Plaintiff, Daniel

Morren. (Id. ¶ 10 PageID.85.) In 2008, Daniel worked for his father at Morren Plastic. (Id.

¶ 11. PageID.85.)

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In 2008, Nelson directed Daniel to draft potential designs for dock flooring. (N.

Morren Aff. ¶ 10.) After Daniel completed his sketches, Nelson, Daniel and Robert

Serschen met and approved the diamond pattern. (Id. ¶ 12 PageID.85.) Serschen was with

Twin Bay, although his specific role at Twin Bay is not identified. (Id. at ¶ 9 PageID.85.)

Nelson asserts that he and Serschen reached an agreement. "We further agreed that

consistent with prior purchases, [Morren Plastic] would mold dock floors with the new design

and Twin B[a]y would buy the dock product to create its docks. Twin Bay would also buy

all product from [Morren Plastic] incorporating the diamond pattern." (Id. at ¶ 13

PageID.85.) In July 2008, Nelson sent a letter to Serschen confirming the agreement and

outlining the costs for creating the dock floor mold. (Id. ¶ 14 PageID.86.) Defendants

submitted the handwritten note.

Diamond Dock Floor Tooling Costs

Hello Bob, We now have firm quotations for inserts to fit into existing
mold base and the quotation for a complete new tool. If we elect the insert
only approach we will need to fit them into the base, and water lines, add
ejector pins, and add insert bolts. In either case, I am projecting the need for
texturing when it gets here.

Build one complete mold = $92,250.00

Build one set of inserts, ship to MPM
To install and finish tool = $58,616.00

So far, my costs are:

Design costs $2850.00
Eng. Costs 2000.00
Attorney Costs 1200.00
Total $6,060.00

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Attached you will find a timeline to accomplish this tooling. I think

things are very tight already. Please advise the direction you wish to take as
soon as possible. If you have any questions just give me a call.
Thanks, Nelson

(ECF No. 15-4 PageID.105.) In August 2008, Twin Bay paid $20,000 to Morren Plastic "to

begin working on creating the diamond dock floor mold." (N. Morren Aff. ¶ 15 PageID.86.)

The invoice states that the $20,000 is the "deposit payment on new tooling costs for the

diamond dock floor." (ECF No. 15-5 PageID.110.) Nelson contends that "[Morren Plastic]

is half owner of the new mold and was able to sell the product as well as Twin Bay. Twin

Bay did not have exclusive rights to sell product from the new mold." (N. Morren Aff. ¶ 9

PageID.85.)

A.

Defendants are not entitled to summary judgment under their first theory that an offer

was made to sell dock products in July or August 2008. There remain genuine issues of

material fact whether Morren Plastic made a commercial offer to sell dock parts containing

Plaintiff's patented design to Twin Bay in July 2008.

The record contains insufficient evidence about important terms of the offer. From

Defendants' evidence, the Court cannot discern even the most basic of terms, such as the

price of any dock flooring product, the quantity offered, or the date of delivery.2 Compare

Elan Corp., PLC v. Andrx Pharms., Inc., 366 F.3d 1336, 1340- (Fed. Cir. 2004) (finding no

offer trigging in the on-sale doctrine because the letter did not mention, among other things,

2
The timeline on page 3 of the handwritten note indicates that Morren Plastic would provide
samples to Twin Bay on December 15, 2008. (PageID.107.) The timeline does not indicate when
products would be available or would be shipped.

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quantities, time of delivery, place of delivery, product specifications beyond a general

statement, or price per item), with Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc.,

726 F.3d 1370, 1375 (Fed. Cir. 2013) (finding a commercial offer for sale where the purchase

order included a shipping address, a billing address, a specific quantity of units to be

purchased, the price per unit, a part number for the unit, and a requested date of delivery).

Considering the offer from another perspective, had Twin Bay accepted the offer and

formed an agreement, and pretending that the relationship soured between Morren Plastic

and Twin Bay and one of the two parties sued the other, this Court could not enforce the

contract because the record contains no evidence about its terms.

Even if the Court could conclude that Defendants' evidence was clear and convincing

and supported the conclusion that an offer was made, the evidence does not establish that

the offer was commercial. "[N]ot every activity that inures some commercial benefit . . . can

be considered a commercial sale." Hospira, 827 F.3d at 1377. Twin Bay does not use dock

products; it sells docks and dock products to end users. Viewing the present evidence in the

light most favorable to Plaintiff, the offer and agreement plausibly are for manufacturing

services, see id. at 1373 (clarifying that contracts for manufacturing services do not constitute

a commercial sale of the invention), or mere preparation for a commercial sale, see id. at

1377 ("It is well-settled that mere preparations for commercial sales are not themselves

'commercial sales' or 'commercial offers for sale' under the on-sale bar.").

B.

For similar reasons, Defendants are not entitled to summary judgment on their theory

that an agreement was made concerning the mold itself, which necessarily included Plaintiff's

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patented design. There remain genuine issues of material fact whether the agreement

between Morren Plastic and Twin Bay regarding the creation of the mold constituted the

sale of Plaintiff's invention so as to trigger the on-sale doctrine.

The handwritten note is not clear and convincing evidence of an offer to sell a mold.

Viewing the handwritten note in the light most favorable to Plaintiff, Nelson Morren asks

Twin Bay to choose between two possible alternatives: (1) have a complete new mold built

for $92,250 or (2) have a set of inserts built for $58,616, which would be used in the existing

mold base. (PageID.105.) The evidence in the record does not clarify which choice was

made. In either case, Morren Plastic would purchase the new tooling, either a complete new

mold or a set of inserts, from a company in China. The invoice reflects that Twin Bay made

a payment toward the "costs" of the new tooling, not the purchase of new tooling.

(PageID.110.) Put another way, Morren Plastic and Twin Bay are buyers, not sellers. And,

the offer for sale would have come from the company in China. The offer for sale, therefore,

was not "in this country." See 35 U.S.C. § 102.

Furthermore, nothing in the documents submitted by Defendants clearly establish

what was offered or what was sold. Morren Plastic retained some ownership of the mold.

(N. Morren Aff. ¶ 9 PageID.85.) And, because Morren Plastic needs the mold to create the

dock parts, Twin Bay does not possess the mold. Twin Bay is not paying to use the new

mold. The record contains no affidavit from any representative of Twin Bay explaining its

understanding of what was offered and what was purchased. And, even if the evidence does

establish an offer, the evidence falls short of establishing a commercial offer by clear and

convincing evidence. There is no evidence in the record establishing the sort of commercial

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practices between these two companies or in the manufacturing industry to show that tooling

costs for molds are considered sales.

C.

Although the Court concludes that there exists genuine issues of material fact for the

first prong of the on-sale doctrine, Defendants have established the second prong of the

doctrine. Even taking the evidence in the light most favorable to Plaintiff, the design was

patentable more than one year prior to the date on which Plaintiff filed his application. The

drawings created by Daniel Morren (ECF No. 15-3 PageID.102) before December 2008

were sufficient for a person skilled in the art to practice his design. And, a mold of the design

was created before December 2008, which demonstrates that the design was reduced to

practice.

IV.

As part of his response, Plaintiff raises two arguments that must be addressed. First,

Plaintiff asserts that none of Defendants' evidence has been authenticated and, therefore, it

is not admissible for purposes of the motions. Second, Plaintiff requests costs and fees

associated with the motion because it was brought in bad faith. Neither argument finds

support in the law.

A.

Plaintiff first argues that Defendants' motion should be denied because Defendants

failed to authenticate any of the documents attached to the motion. Plaintiff reasons that

because the documents have not been authenticated, the documents are not admissible, and

cannot be used to support the motion.

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Rule 56 was amended in 2010 and the rule "no longer draws a clear distinction

between authenticated and unauthenticated evidence for purposes of summary judgment."

Mangum v. Repp, 674 F. App'x 531, 537 (6th Cir. 2017). Rule 56(c)(2) permits a party

opposing summary judgment to "object that the material cited to support or dispute a fact

cannot be presented in a form that would be admissible in evidence." "The objection

functions much as an objection at trial, adjusted for the pretrial setting." Id. advisory

committee's notes to 2010 amendment. The standard is not whether the evidence, as

presented for summary judgement purposes, would be admissible at trial; rather, the

standard is whether the evidence could be presented at trial in an admissible form. Cannon

Int'l, Ltd. v. Blocker, 684 F.3d 785, 793 (8th Cir. 2012); see McGuire v. Michigan Dep't of

Cmty. Health, 526 F. App'x 494, 496 (6th Cir. 2013) (explaining that, for summary judgment,

the content of the evidence must be admissible at trial, even though the evidence need not

be presented in an admissible form) (quoting Bailey v. Floyd Cty. Bd. of Ed., 106 F.3d 135,

145 (6th Cir. 1997)).

Here, the content of the documents attached to Defendants' motion could be

presented at trial in an admissible form. Plaintiff has not asserted otherwise.

B.

Plaintiff requests attorney fees and costs, asserting that Defendants filed this motion

in bad faith. Plaintiff cites 35 U.S.C. § 285, which authorizes a court to award reasonable

attorney fees "to the prevailing party" in "exceptional cases." Octane Fitness, LLC v. ICON

Health & Fitness, Inc., 134 S. Ct. 1749, 1755–56 (2014). To be the "prevailing party" for the

purpose of this fee-shifting statute, the party must have obtain some relief on the merits which

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alters the legal relationship between the parties. Inland Steel Co. v. LTV Steel Co., 364 F.3d

1318, 1320 (Fed. Cir. 2004).

At this point in the litigation, Plaintiff is not a prevailing party. Even if, somehow, the

statute could be interpreted as applying to motion practice alone, the denial of Defendants'

motion for summary judgment does not alter the legal relationship between the parties.

V.

Defendants have not, by clear and convincing evidence, established that there was a

sale or a commercial offer for sale of Plaintiff's invention more than one year before he

applied for his patent. The documents submitted by Defendants generally fail to provide

sufficient detail to be considered a commercial offer. Viewing the evidence in the light most

favorable to Plaintiff, Defendant has not established that, in July 2008, it submitted a

commercial offer, to Twin Bay, for the sale of dock products containing the patented design.

Taking the same view of the evidence, Defendant has not established that it offered or sold

a mold containing the design to Twin Bay. The disputed issues of fact require the Court to

deny Defendants' motion.

No discovery has occurred in this lawsuit. Although Defendants would likely have

had access to all of the evidence necessary to support this motion, it is possible for

Defendants to uncover additional evidence that might make this defense more viable.

Plaintiff, however, should be able to pursue discovery before Defendants get a second bite

at the on-sale apple.

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ORDER

For the reasons provided in the accompanying Opinion, Defendants' motion for

summary judgment (ECF No. 14) is DENIED WITHOUT PREJUDICE.

IT IS SO ORDERED.

Date: February 1, 2018 /s/ Paul L. Maloney

Paul L. Maloney
United States District Judge

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