Orbis Corp. v. Rehrig Pacific Co.

970 F. Supp. 2d 875, 2013 WL 4829299, 2013 U.S. Dist. LEXIS 128887
CourtDistrict Court, E.D. Wisconsin
DecidedSeptember 10, 2013
DocketCase No. 12-CV-1073-JPS
StatusPublished

This text of 970 F. Supp. 2d 875 (Orbis Corp. v. Rehrig Pacific Co.) is published on Counsel Stack Legal Research, covering District Court, E.D. Wisconsin primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Orbis Corp. v. Rehrig Pacific Co., 970 F. Supp. 2d 875, 2013 WL 4829299, 2013 U.S. Dist. LEXIS 128887 (E.D. Wis. 2013).

Opinion

[877]*877ORDER

J.P. STADTMUELLER, District Judge.

This patent suit revolves around U.S. Patent 6,273,259 (“the '259 patent”). Or-bis Corporation (“Orbis”), a manufacturer of commercial baking trays, owns that patent, which covers a baking tray now sold as the NPL663 tray. Orbis sells the NPL663 trays solely to Bimbo Bakeries, Inc. (“Bimbo”), and Bimbo’s affiliated brands. Several years ago, one of those affiliated brands, Sara Lee Corporation (“Sara Lee”) approached the defendant, Rehrig Pacific Company (“Rehrig”), to request that Rehrig design a tray that was both compatible with and similar to the NPL663 tray. Rehrig obliged and designed its SLBT180 tray, which it then began selling to Sara Lee.

After several years of allowing Rehrig to sell its SLBT180 tray to Sara Lee, Orbis sued Rehrig, alleging that the SLBT180 tray infringed upon Orbis’ '259 patent. (Docket # 1). Orbis filed suit in this district on October 22, 2012, and the Court, shortly thereafter, set a jury trial to be held on October 21, 2013. (Docket # 1, # 14). The parties engaged in discovery, which brought with it several rounds of discovery disputes. (See, e.g., Docket # 17, # 20, # 25, # 37, # 38).

Thereafter, each party filed its own motion for summary judgment. (Docket # 46, # 53). Those motions are now fully briefed (# 59, # 61, # 64, # 71), and the Court issues this order, granting Rehrig’s motion for summary judgment and dismissing this case.

1. BACKGROUND

The origins of this suit date all the way back to 1999, and involve two corporations that were later acquired by more important players in this suit. The first of those corporations is Norseman Plastics, Ltd. (“Norseman”). (See DPFF ¶ 12). Norseman was in the same business as Orbis, designing plastics, including baking trays. (See DPFF ¶ 12, 13). The other later-acquired corporation is the Earthgrains Company (“Earthgrains”), a bread supplier that now operates as a subsidiary of Bimbo. (See PPFF ¶ 27; DPFF ¶ 49).

In early 1999, Earthgrains needed new baking trays. (See DPFF ¶ 49). In connection therewith, on February 3, 1999, it sent a letter to Norseman, requesting that Norseman submit a proposal to manufacture those trays. (DPFF ¶ 49). Earthgrains informed Norseman that it would like two separate prototype designs for the bakery trays, provided desired dimensions for those trays, and suggested that it would likely order approximately 1,000,000 units of whatever baking tray it ultimately settled upon. (DPFF ¶¶ 51, 52, 53). Earthgrains also specified certain necessary features for the product, such as a dropped side for product visibility and the ability for the trays to be placed in multiple positions. (DPFF ¶ 54).

Norseman wanted to compete for Earthgrains’ business, and so began ramping up their efforts. They designed two trays, calling them the NPL645 and NPL655. (See DPFF ¶ 56). The NPL655 tray is the only one that is important to this suit. It was later renamed the NPL663 tray (which, as discussed above, is the tray in use by Bimbo). (DPFF ¶ 74; PPFF ¶ 29). There is no substantive difference between the two, and both constitute the physical embodiment of Orbis’ '259 patent; Rehrig designed its SLBT180 tray to be compatible with the NPL663 tray, at Sara Lee’s request. (DPFF ¶ 74).

After designing the tray, Orbis requested a quote from a manufacturer to estimate how much it would cost to produce the NPL655 trays. The manufacturer responded, providing a price quote, time [878]*878frame, reject rate, and location of manufacturing, further stating that “Warehousing terms to be negotiated.” (Docket # 55, Ex. F, at RPCDW-000043). The manufacturer further stated that it reserved the right to change its pricing “until sufficient production run has been completed.” (Docket # 55, Ex. F, at RPCDW-000043).

With that information in hand, Norseman prepared its presentation for Earthgrains, and submitted it to Earthgrains on March 10,1999. (DPFF ¶ 55).

After that presentation, Earthgrains requested several changes to the basket designs, and Norseman submitted a revised proposal addressing those concerns on March 81, 1999. (DPFF ¶ 58). The revised proposal included extremely detailed information, including the following:

(1) a specific price quote for manufacturing the NPL655 at the requested number of units (along with a disclaimer that: “This quotation is valid for 30 days from the date of Issue unless otherwise specified herein and is subject to change without notice in relation to material and labor costs variance.”);
(2) the dimensions, weight, and material used for the NPL655;
(3) the location at which the NPL655 would be manufactured;
(4) diagrams showing the exact appearance of the NPL655, as well as the product’s stacking, positioning, and capacity capabilities;
(5) a list showing that all of Earthgrains’ requested features had been met;
(6) drawings and calculations showing the product’s ability to be placed in multiple different types of trucks;
(7) terms of sale, including: “Net 30 Days, pending credit approval,” and “1-1/2% per month of overdue accounts”;
(8) a statement that “Norseman Plastics will honor price quoted throughout term of order provided a purchase order for 1,000,000 units is placed by April 1, 1999.... Norseman reserves the right to adjust price in the event of a major impact to resins pricing.”; and
(9) a timeline of availability, establishing when mold construction would be completed after receipt of the order and further stating that production would “commence upon [Earthgrains’] approval of samples.”

(Docket # 55, Ex. F, at RPCDW-000096-RPCDW-000136). Norseman included a letter with its revised proposal that clarified the changes it had made to comply with Earthgrains’ requests and the accompanying price increases. (Docket # 55, Ex. F, at RPCDW-000098-RPCDW000099). The letter also informed Earthgrains that “Norseman is pleased to learn of your approval of our design thus far,” and “await[s] your final decision.” (Docket # 55, Ex. F, at RPCDW-000098-RPCDW-000099). Denny Williams, a former employee at Norseman testified about this presentation that Norseman was “prepared to accept the order and proceed,” which would require “creating a supply agreement for execution” and producing production molds. (Williams Dep. at 80:1-8; 131:24-132:24).

Norseman continued to work on refining its design, submitting an update for Earthgrains’ approval in June of 1999 and producing test molds in November of 1999. (PPFF ¶¶ 46, 48). Earthgrains eventually placed its order for the NPL655 tray with Norseman in February of 2000, and Norseman initiated production. (PPFF ¶ 57).

[879]*879Several months later, after production began, Orbis filed for the '259 patent on May 9, 2000. (Docket # 48, Ex. A). The patent issued on August 14, 2001, without amendment or revision (though there were some issues with a second application, which is not important for our discussion). (DPFF ¶¶ 79-83).

The remainder of the facts in this case are ultimately irrelevant, because the Court decides the case on the basis of Rehrig’s argument under the on-sale bar.

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Bluebook (online)
970 F. Supp. 2d 875, 2013 WL 4829299, 2013 U.S. Dist. LEXIS 128887, Counsel Stack Legal Research, https://law.counselstack.com/opinion/orbis-corp-v-rehrig-pacific-co-wied-2013.