# Petition for Writ of Certiorari — Hayes Lemmerz International, Inc. v. Lacks Industries, Inc. (No. 08-1177) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_0315%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2009 ## Text if 2, O Supreme ‘Court U.S. [ 081177 MAR18 2009 No. . — OFFICE OF THE CLERK In The Supreme Court of the United States Haves LEMMERZ INTERNATIONAL, INC., McKEcunik VEHICLE COMPONENTS U.S.A., INC., D/B/A THOMPSON INTERNATIONAL, Petitioners, Vv. LACKS INDUSTRIES, INC., Respondent. On Petition for Writ of Certiorari to the United States Court of Appeals for the Federal Circuit PETITION FOR WRIT OF CERTIORARI J. Michael Huget Stephen E. Glazek John C. Blattner Counsel of Record Butzel Long Josh J. Moss 350 S. Main, Suite 300 Barris Sott Denn & Dniker, L.L.C. Ann Arbor, MI 48104 211 W. Fort Street, #150 (734)995-3110 Detroit, MI 48226-3211 (313) 965-9725 Attorneys for Petitioner McKechnie Vehicle Mark Sobanski Components U.S.A., Inc.. MacMillan, Sobanski & Todd, L.L.C. 720 Water St., 5" Floor Toledo, OH 43604 (419) 255-5900 Attorneys for Petitioner Hayes Lemmerz International, Inc. March 18, 2009 Becker Gallagher + Cincinnau, OH + Washington, D.C. - 800.890.5001 l QUESTION PRESENTED Has the United States Court of Appeals for the Federal Circuit misinterpreted Pfaff v. Wells Elec., Inc., 525 U.S. 55 (1998), and thereby misconstrued the phrase “on sale” in 35 U.S.C. § 102(b), by defining “on sale” to require that an invention be the subject of a commercial offer for sale that the other party could make into a binding contract by simple acceptance (assuming consideration)? il PARTIES TO THE PROCEEDING AND RULE 29.6 STATEMENT There are no parties to the proceeding other than those listed on the caption. Pursuant to Supreme Court Rule 29.6, Petitioners make the following disclosures: Petitioner Hayes Lemmerz International, Inc., f/k/a Hayes Wheels International, Inc., states that it has no parent company. Petitioner McKechnie Vehicle Components USA, Inc. states that its parent company is DLO Investments, Inc. lil TABLE OF CONTENTS Dp cel eo By ny |} br i PARTIES TO THE PROCEEDING AND RULE a re il py 8 Bee yy 6. yy rn ili TABLE OF AUTHORITIES CITED ............ vi Bog Ss | ae 1 Ne eS gly vb See ee vase 2 STATUTORY PROVISIONS INVOLVED ....... 2 STATEMENT OF THE CASE ...............- 3 LE SO ETE CECE EET CR Cees 3 B. Proceedings Leading up to the 2000 Bench ee ee i pas ed ads CK bw os 4 C. The Special Master’s Post-Trial Amended Findings of Fact and Conclusions of Law .. 6 a ee 8 hk kk ke se ee ee eee 9 D. Be ene AMOR... . . ww ee ee es 10 lV REASONS FOR GRANTING THE WRIT ...... 11 A. The Group One Test is Not Supported By the Language of Sectionl102(b) ............. 12 B. The Group One Test Is Based Upon a Misinterpretation of this Court’s Opinion in Pfaff and Conflicts with the Policies Underlying the On-Sale Bar ........... 14 1. The Federal Circuit Misinterpreted | AIRE rr ts rmeir i een a eee 14 2. The Group One Test Undermines the Primary Policy Consideration Behind the On-Sale Bar of Preventing Inventors from Extending the Statutory Patent I oes cs dace chon oo A Oe meas ee eee 17 3. The Group One Test Results in a Lack of Clarity and Certainty for Inventors and for Courts, as well as a Lack of Uniformity Among Industries ....... 23 CE os os eae eecasd ae tees 25 APPENDIX Appendix A: Federal Circuit Opinion (Nov. 21, CR Sn ie ae kak Kier wa ale la Appendix B: District Court Order on Cross- Motions for Summary Judgment (Nov. 20,. ae re re ee ear Sarre ee ee l3a Vv Appendix C: District Court, Special Master’s Report and Recommendation on Cross-Motions for Summary Judgment Concerning Patent Invalidity Defense Based on Alleged On-Sale Se ie a gs ea ee eh Oe 18a Appendix D: Federal Circuit Opinion (Mar. 13, a rae ha Soke FS ae a ee ee Oe, 12la Be hy a Wig ak wie h-ei ew aeR e aS 168a Appendix F: District Court, Special Master's Amended Report and Recommendation Amended Findings of Fact and Conclusions of DE, BP oh 8 koa ee wk eam 17la Appendix G: Federal Circuit Order re Rehearing I i a a a aa oe 274a Appendix H: District Court Stipulation and Order Regarding Appointment of Special Pe CGO. FO, We 66 en es oe sees 276a v1 TABLE OF AUTHORITIES CITED Cases Elizabeth v. American Nicholson Pavement Co., BAS SS LSS ye: Sara 17, 18 Engine Manuf. Assoc. v. South Coast Air Quality Management Dist., a 5 rrr 13 Gould Inc. v. United States, op gk 2 vo Ie To a) ) 14 Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001) ......... passim Linear Tech. Corp. v. Micrel, Inc., 275 F.3d. 1040 (Fed. Cir. 2002)... 13, 21, 22, 23 Metalizing Eng’g Co., Inc. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2nd Cir. 1946) ............... 14 Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., P,P) 6 ee cee ee eas 13 Pfaff v. Wells Elec., Inc., ee Se, SO CRD oo ct ee eee ee eee passim RCA Corp. v. Data Gen. Corp., 887 F.2d 1056 (Fed. Cir. 1989) ..... 7, 8, 13, 21 Statutes a 8) 2 ee We oo ee ee ec cdawe sevens passim Other Authorities CORBIN ON CONTRACTS § 1.12, P. 33, Revised Edition SO I a ee rn el 24 Lord, Richard A., Williston on Contracts § 4:13, at ee es i ee, Sis ot 24 The Random House Dictionary of the English Language, Unabridged Edition, p. 1262 > MYARTS ole nil ce ote Hn aatiee PeLg aD Nt cen rn 13 Restatement of Contracts (Second) § 24 (1981)... 23 Ser EE oan hah oe oa os ke ae 24 Webster’s Ninth New College Dictionary, p. 1037 | ee ere eer rn ere ere 13 1 IN THE SUPREME COURT OF THE UNITED STATES PETITION FOR WRIT OF CERTIORARI Petitioner respectfully prays that a writ of certiorari issue to review the judgment below. OPINIONS BELOW The District Court has entered judgment for Petitioners Hayes Lemmerz International, Inc. and McKechnie Vehicle Components U.S.A., Inc. (“Petitioners”) twice in this case, both times based upon rulings by a Special Master appointed by the court pursuant to the stipulation of the parties. The United States Court of Appeals for the Federal Circuit has reversed and remanded twice, and the case is currently before the District Court again on the second remand. The relevant opinions are listed below. The 2008 opinion of the United States Court of Appeals for the Federal Circuit is unreported, but is unofficially reported at 300 Fed.Appx. 904, 2008 WL 4962687. (App. la-12a.) The 2007 order of the United States District Court for the Eastern District of Michigan adopting the 2007 Special Master’s Report and Recommendation is unreported. (App. 13a-17a.) The 2007 Special Master's Report § and Recommendation is unreported. (App. 18a-120a.) The 2003 opinion of the United States Court of Appeals for the Federal Circuit is reported at Lacks Indus., Inc. v. McKechnie Vehicle Components USA, 2 Inc., et al., 322 F.3d 1335 (Fed. Cir. 2003). (App. 121a- 167a.) The 2001 Judgment of the United States District Court adopting the 2001 Special Master’s Amended Findings of Fact and Conclusions of Law and entering judgment on the same is unreported. (App. 168a-170a.) The 2001 Special Master’s Amended Findings of Fact and Conclusions of Law is unreported. (App. 171a-273a.) JURISDICTION The judgment of the United States Court of Appeals for the Federal Circuit was entered on November 26, 2008. Defendants’ petition for rehearing was denied on December 18, 2008. (App. 274a-275a.) This Court has jurisdiction under 28 U.S.C. § 1254(1). STATUTORY PROVISIONS INVOLVED This case involves the following provision of the United States Code: 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(b). 3 STATEMENT OF THE CASE A. Introduction The Court should grant certiorari in this case because the Court of Appeals for the Federal Circuit has misinterpreted the federal statute that precludes an inventor from obtaining a patent claiming an invention that was on sale more than one year prior to the date of application. See 35 U.S.C. § 102(b). In Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001), the Federal Circuit abandoned its own precedent and decades of law developed in other courts based upon a clear misreading of this Court’s decision in Pfaff v. Wells Elec., Inc., 525 U.S. 55 (1998). Under the new test set forth in Group One, an invention is deemed to be “on sale” under Section 102(b) only if it is the subject of a commercial offer for sale that the other party could make into a binding contract by simple acceptance. The Federal Circuit’s change to the on-sale bar analysis upsets the balance of interests struck by Congress in spurring invention on the one hand and preventing inventors from enlarging their government-granted monopoly period on the other. The absurd result in this case shows that the Federal Circuit's new standard allows inventors to commercially market their inventions for years prior to filing a patent application without triggering the on- sale bar. The facts found by the Special Master after the 2000 trial that remain unchallenged showed that for two years before the critical date, Respondent Lacks Industries, Inc., the patent owner, conducted a thorough and widespread commercial marketing campaign promoting its ready for-patenting invention. 4 The campaign included, among other things, dozens of sales calls to automobile manufacturers and automotive wheel manufacturers during which Lacks sought purchasers for its later-patented invention. Lacks’ marketing efforts before the critical date also included multi-day technology shows in which the invention was marketed to automobile manufacturers, and numerous meetings with wheel manufacturers in which Lacks marketed the invention. The Special Master and the District Court found that under the controlling on-sale bar jurisprudence, Lacks’ pre-critical date commercial activities clearly triggered the on-sale bar. Between the District Court’s entry of judgment and oral argument on Lacks’ appeal, the Federal Circuit issued its opinion in Group One. Because the Federal Circuit dramatically changed the on-sale bar analysis in Group One, thirteen (13) years after this case was filed, the parties are still litigating what constitutes a binding offer for sale in the automotive industry. B. Proceedings Leading up to the 2000 Bench Trial The patent at issue in this case relates to decorative overlays or claddings that are affixed to the outwardly facing surface of automotive wheels. (App. 175a.) The resulting composite wheels are aesthetically attractive, but less expensive than the chrome-plated wheels for which they are a substitute. (App. 175.) The claims of the patent at issue relate to a method for securing the claddings to wheels with adhesive. (App. 175a-76a.) 5 Plaintiff Lacks Industries, Inc. (“Lacks”) filed this patent infringement action in the Eastern District of Michigan in February, 1996 alleging infringement of three patents. Only claims 11-13, 20-22, 24, and 25 of U.S. Patent No. 5,597,213 (the “213 Patent”) survived summary judgment and remain at issue (the “Remaining Claims”). As part of its summary judgment decision, the District Court ruled that the invention of the Remaining Claims was ready-for- patenting in May 1992. Lacks Indus., Inc. ov. McKechnie Vehicle Components USA, Inc., 55 F. Supp. 2d 702, 734 (E.D. Mich. 1999). On February 15, 2000, the parties stipulated to the appointment of a Special Master. (App. 278a.) The stipulation and order of appointment directed the Special Master to make all factual findings and legal conclusions necessary to determine whether Petitioners’ accused products infringed the Remaining Claims. (App. 278.) The Special Master was also directed to make all factual findings and legal conclusions necessary to determine whether the Remaining Claims were invalid under 35 U.S.C. § 102(b) as a result of Lacks’ efforts to commercialize the invention prior to the June 6, 1994 critical date. ' The parties also stipulated that the Special Master’s findings of fact would be final and that the District Court would review only his conc)usions of law. (App. 279a.) The application that matured into the '213 Patent was filed on June 6, 1995 6 C. The Special Master’s Post-Trial Amended Findings of Fact and Conclusions of Law After a one-week bench trial, the Special Master issued Amended Findings of Fact and Conclusions of Law. The Special Master found that Petitioners’ accused products infringed the Remaining Claims of the ’213 Patent.” (App. 272a.) The Special Master also concluded, however, that the Remaining Claims were invalid because Lacks had the claimed invention on sale for more than a year before the patent application was filed. (App. 273a.) The Special Master made several factual findings underlying his invalidity ruling that Lacks never challenged. Regarding Lacks’ pre-critical date sales efforts, the Special Master found as follows: The record abundantly establishes a thorough and extensive campaign by Lacks to exploit competitively, to use for profit and _ to commercialize the ready-for-patenting method, commencing two years before the June 6, 1994 critical date. After the May, 1992 ready-for- patenting date, Lacks made pre-critical date commercialization efforts with both wheel manufacturers and OEMs.* Lacks widely promoted the use of a specific composite wheel assembly technique, namely, the assembly techniquc of its later-granted method claims, to make wheels for any and all future vehicle * Prior to trial, Lacks conceded that Defendants’ products did not infringe claims 21-22. 3u n- . : — . OEMs’ is an abbreviation for original equipment manufacturers of automobiles. 7 models. Its sales and solicitations took the form of demonstrations of physical samples of prototypes made in accordance with the asserted method claims, and repeated sales contacts with the same potential customers to highlight the advantages of the resulting products. (App. 259a-60a.) Regarding the correlation between the invention of the Remaining Claims and Lacks’ commercial activities, the Special Master found as follows: Lacks’ own contemporaneous documentation and trial testimony, summarized above, abundantly establish that (1) the assembly method that Lacks was offering to perform corresponded precisely with the invention of the Remaining Claims, and (2) the overlays and composite wheels that it was offering to sell in conjunction with a_ wheel-manufacturing partner were to be made by the claimed method. (App. 260a.) The Special Master analyzed the facts under the then prevailing Federal Circuit law articulated in RCA Corp. v. Data Gen. Corp., 887 F.2d 1056 (Fed. Cir. 1989) and conciuded that the Remaining Claims were invalid under 35 U.S.C. § 102(b). (App. 273.) Under RCA Corp., for commercial activity to trigger the on- sale bar, it had to be more than “merely indefinite or nebulous discussion about a possible sale.” RCA Corp., 887 F.2d at 1062. The commercial activity, however, need not rise to the level of a “formal commercial ‘offer 8 under contract law principles.” Jd. Because Lacks’ pre- critical date commercial activity satisfied this requirement by clear and convincing evidence, the Special Master ruled that the Remaining Claims were invalid under Section 102(b). On April 23, 2001, the District Court adopted the Special Master’s Findings of Fact and Conclusions of Law and entered judgment in favor of Petitioners and against Lacks. (App. 168a-70a.) D. The First Appeal After the District Court entered judgment, but before argument on the appeal, the Federal Circuit changed the on-sale bar analysis. In Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001), based on a misinterpretation of this Court’s decision in Pfaff, the Federal Circuit abandoned the RCA Corp. standard and held that an invention is on sale under Section 102(b) only if it is the subject of a commercial offer for sale “which the other party could make into a binding contract by simple acceptance (assuming consideration).” Jd. at 1048. The Federal Circuit rejected Petitioners’ argument that Lacks’ commercial activities in the record amounted to contractual offers for sale based upon automotive industry practice, holding that the record was insufficient to make such a ruling as a matter of law. (App. 144a.) Consequently, the Federal Circuit vacated the on-sale determination by the Special Master because he had applied the outdated RCA Corp. standard. (App. 144a-45a.) The court remanded for consideration under the new standard and instructed that “[oJn remand, the district court (or the Special Master) may need to take additional evidence on the 9 practice in the industry to determine if the activities by Lacks rise to an offer for sale under the UCC.” (App. 145a.) Lacks did not appeal, and the Federal Circuit did not address, the Special Master’s findings of fact regarding Lacks’ pre-critical date activities. E. On Remand On remand, the Special Master determined that additional evidence regarding sales practices in the automotive industry was needed. The parties conducted extensive discovery regarding sales practices in the industry. (App. 48a-49a.) Two aspects of this evidence are relevant to this petition. First, the uncontested evidence showed that the complex process for incorporating new products into automobiles requires collaboration between the supplier providing the new product and the OEM. This product development time period is often 36 to 42 months. (App. 54a-55a, 67a-68a.) It is important to note that this product development period occurs after the supplier has marketed its new product to OEMs and succeeded in convincing one or more OEMs to incorporate the new product into its vehicles. (App. 56a-57a, 68a.) - Second, the uncontested evidence demonstrated that the first document containing formal contract “offer” language is produced shortly before production of a new vehicle model incorporating the new product begins. (App. 59a, 62a, 65a, 68a.) When the OEM is about to begin production, the OEM issues a purchase order to the supplier stating that the purchase order is an offer to buy the new part. (/d.) Thus, because of the OEMs contracting procedures, by the time the first formal contractual document is issued, the supplier 10 has commercially marketed its new product, succeeded in securing an OEM’s (unwmtten) commitment to purchase and use the new product in its vehicles, worked collaboratively for between 36 and 42 months with the OEM to develop the product so that it passes the OEM’s safety and durability requirements, and refined the product so that the vehicle can accommodate inclusion of the new part. (App. 52a- 69a.) On August 17, 2007, the Special Master issued his Report and Recommendation in which he concluded that the undisputed evidence demonstrated that Lacks had made five commercial offers for sale that satisfied the Group One standard. (App. 112a-l3a.) Ina separate section titled “Additional Considerations,” the Special Master articulated his belief that the Federal Circuit in Group One had misinterpreted Pfaff and discussed the shortcomings of the Group One test. (App. 113a-20a.) On November 11, 2007, the >: crict Court adopted the Special Master’s Report and Recommendation. (App. 138a-15a.) The District Court specifically endorsed the Special Master’s Additional Considerations. (App. 15a.) F. The Second Appeal On November 26, 2008, the Federal Circuit reversed in part and affirmed in part. (App. la-12a.) The Federal Circuit affirmed the District Court’s denial of Lacks’ motion for summary judgment. The court, however, reversed the District Court’s grant of summary judgment of invalidity, holding that there were genuine issues of material fact precluding 11 summary judgment. The Federal Circuit remanded for the District Court to determine whether Defendants could establish by clear and convincing evidence: (1) if any of the five offers at issue rose to the level of a commercial offer for sale under the Group One standard; (2) if so, was the offer communicated to the offeree; and (3) did the product or process offered satisfy each element of the Remaining Claims. (App. 12a.) On December 18, 2009, the Federal Circuit denied Defendants’ petition for rehearing. (App. 274a-75a.) REASONS FOR GRANTING THE WRIT The Court should grant the petition because the United States Court of Appeals for the Federal Circuit decided an important issue of federal law that has not been, but should be, settled by this Court. The Group One test is not supported by the statutory language and conflicts with this Court’s repeated statements that any attempts by inventors to commercialize their inventions prior to the critical date will trigger the on- sale bar. Group One is based upon an obvious misinterpretation of this Court’s ruling in Pfaff. It is also plainly inconsistent with the primary policy goal of the on-sale bar — preventing inventors from extending their government-granted monopolies beyond the statutory term. The absurd result in this case 1s a concrete example of Group One’s destructive effect on the policies underlying Section 102(b). By extending patent protection to inventions already in the public domain, or allowing inventors to increase the length of their monopolies by delaying the filing of a patent application, the Group One test results in unwarranted monopolies that stifle competition. 12 Finally, as a practical matter, the Group One test leaves inventors and the courts with less, rather than more, clarity and certainty in the on-sale bar analysis. Because the Federal Circuit has adopted an erroneous construction of the on-sale bar that will continue to have adverse consequences on the economic engines of competition and innovation, the petition raises an important national issue that should be resolved by this Court. A. The Group One Test is Not Supported By the Language of Section102(b) The Court should grant the petition because the Federal Circuit’s test for whether an invention is on sale under 35 U.S.C. § 102(b) is not supported by the language of the statute. Section 102(b) provides that: A person shall be entitled to a patent unless... the invention was... 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(b) (emphasis added). From the short phrase “on sale,” the Federal Circuit has generated its binding contractual offer for sale test: Only an offer which rises to the level of a commercia! offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration) constitutes an offer for sale under § 102(b). Group One, 254 F.3d at 1048. 13 The Federal Circuit’s extrapolation violates the basic rule that statutory construction begins “with the language employed by Congress and the assumption that the ordinary meaning of that language accurately expresses the legislative purpose.” Engine Manuf. Assoc. v. South Coast Air Quality Management Dist., 541 U.S. 246, 252 (2004) quoting Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985). Nothing in the language of Section102(b) suggests that Congress intended that the phrase “on sale” be construed so narrowly or that it be given a formalistic gloss. The Federal Circuit’s interpretation bears little resemblance to the ordinary meaning of the phrase “on sale.” The plain meaning of the phrase “on sale” is “available for purchase.” For example, Webster’s Dictionary defines “sale” as “opportunity of selling or being sold.” Webster’s Ninth New College Dictionary, p. 1037 (1988). See also The Random House Dictionary of the Engiish Language, Unabridged Edition, p. 1262 (1967) (“opportunity to sell”). This ordinary use of the phrase “on sale” is consistent with the Federal Circuit’s own precedent, which it abandoned in Group One. See Linear Tech. Corp. v. Micrel, Inc., 275 F.3d. 1040, 1048 (Fed. Cir. 2002) (noting that in Group One, the court had “expressly held that our previous enunciation of the law in RCA Corp. is incorrect in light of Pfaff.”) In RCA Corp., the Federal Circuit recognized that an invention could be on sale under Section 102(b) even if the inventor’s commercial activities fell short of a binding commercial] offer for sale. RCA Corp. , 887 F.2d 14 at 1062.4 The Federal Circuit’s renunciation of this principle detached the on-sale bar analysis from the statutory framework. The Court should grant the petition so that it can settle this important issue of federal law. B. The Group One Test Is Based Upon a Misinterpretation of this Court’s Opinion in Pfaff and Conflicts with the Policies Underlying the On-Sale Bar 1. The Federal Circuit Misinterpreted Pfaff The Federal Circuit based its departure from the statutory language and from its own precedent upon a misreading of this Court’s opinion in Pfaff, 525 U.S. 55. In Pfaff, the Court addressed “whether the commercial marketing of a newly invented product may mark the beginning of the 1-year period [under Section 102(b)] even though the invention has not yet been reduced to practice.” Jd. at 57. The Court held that an invention need not be reduced to practice in order to trigger the on-sale bar. Rather, the one-year grace period under Section 102(b) begins “when an invention that is ready for patenting is first marketed commercially.” Id. at 67 (emphasis added). The ready- for-patenting prong, which was the focus of the opinion and the issue on which the Court granted certiorari, could be established either by showing that the invention had either been reduced to practice or by proof that the inventor had “prepared drawings or * See also Gould Inc. v. United States, 579 F.2d 571, 580 (Ct. Cl. 1978); Metalizing Eng'g Co., Inc. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 518 (2" Cir. 1946). 15 other descriptions sufficiently specific to enable one skilled in the art to practice the invention.” Id. at 67- 68. Thus, the Court concluded that the on-sale bar applies when two conditions are satisfied. “First, the product must be the subject of a commercial offer for sale.” Id. at 67. “Second, the invention must be ready for patenting.” Id. Even though the Court had given no indication that it attached new or special meaning to it, the Federal Circuit seized upon the phrase “commercial offer for sale,” and surmised that Pfaff “strongly suggests that the offer must meet the level of an offer for sale in the contract sense, one that would be understood as such in the commercial community.” Group One, 254 F.3d at 1046. Consequently, the Federal Circuit ruled that the first prong of Pfaff would be satisfied only if the invention was the subject of a commercial offer for sale that the other party could make into a binding contract by simple acceptance. Id. at 1048. The phrase on which the Federal Circuit relied, the paragraph from which it was excised, and the entirety of the Pfaff opinion, all make clear that the Federal Circuit misinterpreted Pfaff, reading into it worlds of meaning not intended by this Court. The full paragraph from Pfaff reads as follows: We conclude, therefore, that the on-sale bar applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. The experimental use doctrine, for example, has not generated concerns about 16 indefiniteness, and we perceive no reason why unmanageable uncertainty should attend a rule that measures the application of the on-sale bar of § 102(b) against the date when an invention that is ready for patenting is first marketed commercially. In this case, the acceptance of the purchase order prior to April 8, 1981, makes it clear that such an offer had been made, and there is no question that the sale was commercial rather than experimental in character. Pfaff, 525 U.S. at 67 (emphasis added). The phrase “commercial offer for sale,” without more, does not suggest that only a legally binding offer for sale under contract law will trigger the on-sale bar. Rather, it requires only that the product be available for sale. The Court’s elaboration of the point in the remainder of the paragraph vividly illustrates the Federal Circuit’s mistake. The Court twice equates “commercial offer for sale” with “first commercial marketing.” it also states repeatedly in other parts of the opinion that any pre-critical date efforts by inventors to exploit their inventions for profit will trigger the on-sale bar. Consequently, the Court’s use of the phrase “commercial offer for sale” does not imply that it intended to create a new, narrow, and formalistic test under contract law for whether something was “on sale” for the purposes of patent law. As the Special Master noted in his Additional Considerations, which the District Court explicitly adopted, the phrase “commercial offer for sale” comes after a discussion of the experimental use doctrine. Under this exception to Section102(b), transactions or 17 uses involving an invention that are in furtherance of a bona fide effort to perfect the invention do not trigger the on-sale bar. (App. 117a.) Thus, the Court’s use of this phrase was merely to maintain the distinction between activities that are primarily for experimental purposes and activities that are for commercial purposes. (App. 116a-17a.) Nothing in Pfaff supports, let alone commands, the Federal Circuit’s legally binding commercial offer for sale test set forth in Group One. 2. The Group One Test Undermines the Primary Policy Consideration Behind the On-Sale Bar of Preventing Inventors from Extending the Statutory Patent Term The Court should grant the petition because the Group One test is inconsistent with the policy considerations underlying the on-sale bar as articulated in Pfaff and other cases reaching back more than 100 years. The Court notes in Pfaff that the purpose of Section 102(b) is to both exclude from patenting things that are already in the public domain and to confine the duration of the patentee’s government-granted monopoly to the statutory term. Id. at 64. The patent system represents “a carefully crafted bargain that encourages both creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.” Pfaff, 525 U.S. at 63 (emphasis added). Quoting a case decided in 1877, the Court reiterated that any attempt by an inventor to commercialize his invention prior to the critical date will invalidate the patent. Jd. at 65 (quoting Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 137 (1877)): 18 It is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law; but this cannot be said with justice when the delay is occasioned by a bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended. His monopoly only continues for the allotted period, in any event; and it is the interest of the public, as well as himself, that the invention should be perfect and properly tested, before a patent is granted for it. Any attempt to use it for profit, and not by way of experiment, for a longer period than two years before the application, would deprive the inventor of his right to a patent. Id. at 64-65 (quoting Elizabeth, 97 U.S. at 137 (1877)) (emphasis added). The Federal Circuit has drawn an artificial line between (a) commercial marketing, advertising, and other pre-contracting promotional activity that is clearly intended to exploit inventions for profit and (b) offers for sale that are definite enough to allow the offeree to form a contract by mere acceptance. This unwarranted distinction flies in the face of this Court’s reiteration in Pfaff of the principle that any attempt to use an invention (that is ready for patenting) for profit triggers the on-sale bar. Id. This Court’s intervention is necessary because the Group One court’s misinterpretation of Section 102(b) allows inventors to commercially market their 19 products for years without triggering the on-sale bar, thereby extending the statutory monopoly term. Even under the most innocent circumstances, the Group One test delays commencement of the one-year grace period until the point where an inventor enters into formal contract negotiations with a particular customer. This removes from the one-year grace period the time an inventor may spend promoting his ready-for-patenting invention to potential customers, touting the invention’s advantages, and bringing potential customers to the point where at least one of them is ready to negotiate a purchase. This phase of promotional activity is no less an attempt by an inventor to exploit his invention for profit than the following phase in which a contract is negotiated and concluded. Thus, under the Group One test, an inventor is free to commercially market his invention for as long as it takes to find a potential buyer willing to negotiate for the purchase of the invention. Depending on, among other things, the nature, value, cost, and complexity of the invention, this could last for years — as it did in this case. This case is a paradigmatic example of monopoly extension resulting from application of the Group One standard. The unchallenged findings of fact by the Special Master after the 2000 bench trial establish that Lacks embarked on a thorough and extensive marketing campaign to commercialize the ready-for- patenting invention of the Remaining Claims that commenced more than two years before the June 6, 1994 critical date. (App. 259a.) Lacks’ pre-critical date promotional activities that the Special Master found Lacks had undertaken to commercialize the ready-for- patenting invention of the Remaining Claims included execution of confidentiality agreements with General 20 Motors Truck & Bus Division and with three different wheel manufacturers. (App. 262a-63a.) Additionally, between August 31, 1992 and June 2, 1994 — the 21 months preceding the critical date — one of Lacks’ independent sales representative had at least fifteen (15) meetings with representatives of Ford Motor Company (“Ford”) to persuade Ford to purchase wheels made with the method of the Remaining Claims. (App. 263a-64a.) In June 1993, Lacks staged two promotional “Technology Updates” — one for Chrysler representatives and one for Ford — to show off its new technologies. At both shows, Lacks displayed sample cladded wheels that would, if purchased by an OEM, be manufactured using the method of the Remaining Claims. (App. 265a.) Additionally, Lacks sales representatives also had several meetings Accuride, a wheel manufacturer, to promote its new technology. (App. 265a-66a.) Not surprisingly, based on this and other evidence, the Special Master found that: The record abundantly establishes a thorough and extensive campaign by Lacks to exploit competitively, to use for profit and _ to commercialize the ready-for-patenting method, commencing two years before the June 6, 1994 critical date. After the May, 1992 ready-for- patenting date, Lacks made pre-critical date commercialization efforts with both wheel manufacturers and OEMs. Lacks’ widely promoted the use of a specific composite wheel assembly technique, namely, the assembly technique of its later-granted method claims, to make wheels for any and all future vehicle models. Its sales and solicitations took the form 21 of demonstrations of physical samples of prototypes made in accordance with the asserted method claims, and repeated sales contacts with the same potential customers to highlight the advantages of the resulting products. (App. 259a-60a (emphasis in original).) Notwithstanding that Lacks had been actively promoting ard seeking to profit from the invention of the Remaining Claims for two years before the critical date, the Federal Circuit reversed because the Special Master had applied the RCA Corp. commercialization standard. (App. 141a-45a.) The court remanded so that the evidence could be reviewed under the new Group One standard to see if any of Lacks’ pre-critical date activities rose to the level of a binding commercial offer for sale. (App. 145a.) Thus, application of the Group One standard potentially gave Lacks as much as two extra years before the critical date in which to commercially exploit its invention — yet without triggering the on-sale bar. This case is not isolated. In Linear, after a bench trial, the district court found that the plaintiff had undertaken extensive pre-critical date promotional activities, including distributing data sheets detailing the new product, distributing newsletters, and promoting the product at trade shows. Linear, 275 F.3d at 1046. These efforts had resulted in orders for the product from several customers. Id. at 1047. The Federal Circuit acknowledged that these activities would have triggered the on-sale bar under the RCA Corp. standard. Jd. at 1049. Nevertheless, it reversed the trial court’s invalidity ruling because none of the 22 activities rose to the level of a binding offer to sell under the Group One test. Id. at 1051. The evidence developed after remand in this case regarding sales practices in the automotive industry shows that product development, safety testing, and product validation — all of which occur after an OEM has decided to use a new product — typically take more than two years to complete. (App. 68a.) The record demonstrates that under the OEMs’ standard contracting procedures, the first document in these long-term relationships that uses formal contractual offer language comes at the end of the product development period, not the beginning — and is styled as an offer to buy from the OEM, not an offer to sell from the patentee. (App. 59a, 65a, 67a-69a.) Group One’s formalistic contract law standard is easily manipulated. Inventors can aggressively commercialize their inventions while delaying the start of the one-year grace period by omitting from documents shared with potential customers key contractual terms necessary to show a binding offer for sale. Indeed, they can accomplish the same end by reciting that a particular document is not intended to be a binding offer and that the inventor will not be bound without a fully-executed agreement. (App. 118a.) “Such calculated maneuvers could potentially avoid the otherwise potentially binding effect of their offer, and enable them to freely prolong their pre-filing commercial exploitation without jeopardy to their patent rights.” (App. 118a.) Nothing in Section 102(b), Pfaff, or any other precedent prior to Group One, suggests that Congress intended to allow inventors more than one year to 23 commercially market their inventions without triggering the on-sale bar. To the contrary, and as the result in this case demonstrates, the Group One test contravenes the policy considerations clearly stated in Pfaff and the other cases discussed above. 3. The Group One Test Results in a Lack of Clarity and Certainty for Inventors and for Courts, as well as a Lack of Uniformity Among Industries The Group One test also undermines the interest 1n providing inventors with “a definite standard for determining when a patent application must be filed.” Pfaff, 525 U.S. at 65. Contrary to the Federal Circuit’s view, questions of whether a party has made a binding offer, which party made an offer, or what the terms of a particular offer are, cannot be answered by the application of a bright iine rule of law. When it first set forth the new test, the Federal Circuit advised that as a general proposition, it would look to the Uniform Commercial Code (“UCC”) for guidance on the issue. Group One, 254 F.3d at 1047. As the Federal Circuit was quickly forced to acknowledge, however, the UCC does not define “offer.” Linear, 275 F.3d at 1050. Thus, the Federal Circuit’s bright-line test quickly dissolved, and it stated that henceforth it would “look to the common law to guide {its} inquiry.” Id. It set forth the following guidelines for determining whether a commercial offer for sale had been made: An offer is the manifestation of willingness to enter into a bargain, so made as to justify another person in understanding that his assent to that bargain is invited and will conclude it. Restatement of Contracts (Second) § 24 (1981)); 24 accord Richard A. Lord, Williston on Contracts § 4:13, at 367 (4° ed. 1990) (explaining that “in order for an offer to exist, it must constitute a manifestation communicated to the offeree so as to justify his understanding that by assenting a bargain will be concluded”). Id. This adds nothing in terms of clarity or certainty. The UCC recognizes that “[a]n agreement sufficient to constitute a contract of sale may be found even though the moment of its making is uncertain.” UCC §2- 204(2). There are also “many cases at common law, not governed by the Uniform Commercial Code, where it is clear that a contract has been formed, but the process of offer and acceptance—if there was one—cannot be reconstructed.” CORBIN ON CONTRACTS §1.12, P.33, Revised Edition West Pub. 1993 (emphasis added). That fact that a contract can be made, even though the offer remains unidentifiable, highlights a serious defect in the Group One test. Situations will arise where an inventor and a purchaser have made a contract for the purchase of a new product, but the date of the offer for sale — if there was one — cannot be reconstructed from the evidence. In such circumstances, the Group One test utterly collapses. The Group One test also undermines the interest of having national uniformity in the application of patent law, which the Federal Circuit hoped to promote. See Group One, 254 F.3d at 1047 (noting the importance of having a uniform national rule regarding the on-sale bar). The post-remand discovery in this case is filled 25 with evidence regarding intricacies of contract formation that are peculiar to the automotive industry. (App. 52a-69a.) Both remands by the Federal Circuit in this case recognize that industry custom and practice inevitably influence how industry participants perceive communications, and thus impact whether a communication can reasonably be perceived as a binding offer for sale. Presumably, many other industries also have their own unique modes of communication and their own idiosyncratic standards and customs regarding contract formation. In such industries, application of the Group One test will require litigants and courts to delve deeply into these peculiarities every time the on-sale bar is an issue. This is neither likely to create a definitive body of law that is easy for the courts to apply, nor is it likely to give clear guidance to inventors hoping to understand when they must file their patent applications. CONCLUSION For the reasons stated above, the petition for a writ of certiorari should be granted. Respectfully submitted, Barris, Sott, Denn & Driker, P.L.L.C. By: Stephen E. Glazek, Esq. (P23186) Counsel of Record Josh J. Moss, Esq. (P64406) 211 West Fort Street, 15th Floor Detroit, Michigan 48226 (313) 965-9725 Attorneys for Petitioner Hayes Lemmerz International, Inc. 26 MacMILLAN, SOBANSKI & TODD, L.L.C. By: Mark Sobanski 720 Water St., 5" Floor Toledo, OH 43604 (419) 255-5900 Co-Counsel for Petitioner Hayes Lemmerz International, Inc. BUTZEL LONG By: J. Michael Huget (P39150) John C. Blattner (P52745) 350 S. Main, Ste. 300 Ann Arbor, MI 48104 (734) 995-3110 Attorneys for Petitioner McKechnie Vehicle Components USA, Inc. APPENDIX la APPENDIX A NOTE: This disposition is nonprecedential. UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT No. 2008-1167 [Filed November 21, 2008] | LACKS INDUSTRIES, INC., Plaintiff-Appellant, be MCKECHNIE VEHICLE COMPONENTS USA, INC. (doing business as Thompson International), Defendant-Appellee, and HAYES WHEEL INTERNATIONAL, INC., Defendant-Appellee. Before MICHEL, Chiet Judge, CLEVENGER and MOORE, Circuit Judges. 2a MICHEL, Chief Judge. Plaintiff-Appellant Lacks Industries, Inc. (“Lacks”) appeals from the grant of summary judgment of invalidity in favor of Defendants-Appellees McKechnie Vehicle Components USA, Inc. and Hayes Wheel International, Inc. (collectively, “Defendants”), and the denial of Lacks’ motion for summary judgment on validity. See Order, Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., No. 96-75692 (E.D.Mich. Nov. 20, 2007) (“Summary Judgment Order”). The district court held that claims 11-13, 20-22, and 24-25 (“the Remaining Claims”) of United States Patent No. 5,597,213 (“the ‘213 patent”) were invalid under 35 U.S.C. § 102(b) due to Lacks’ alleged pre-critical date on-sale activities. We heard oral argument on November 6, 2008. We affirm the district court’s denial of Lacks’ motion for summary judgment as we find no abuse of discretion. However, because we conclude that there remain genuine issues of material facts, the district court’s grant of Defendants’ motion for summary judgment is reversed, and the case is remanded. I. BACKGROUND Lacks commenced a multi-patent infringement action against Defendants in the United States District Court for the Eastern District of Michigan on December 18, 1996. In this appeal, the only patent left is the ‘213 patent. The claims at issue, the Remaining Claims, all relate to methods for assembling an overlay to a wheel. This is our second review of the protracted litigation. In the first round, a special master found 3a after a bench trial that Defendants infringed the Remaining Claims but that the same claims were invalid under § 102(b) as a result of Lacks’ pre-critical date commercial activities. The Special Master found that none of Lacks’ activities was a commercial offer for sale as defined by contract law. However, he concluded that under the totality of the circumstances, there was a definite offer. The district court adopted the Special Master’s findings and conclusions. On appeal and cross-appeal to this court, we affirmed the finding of infringement but vacated the invalidity decision. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335 (Fed. Cir. 2003). We concluded that the Special Master erred by applying an outdated legal standard that was superseded by Group One, Ltd. v. Hallmark Cards, 254 F.3d 1041, 1048 (Fed. Cir. 2001), a decision handed down after the Special Master issued his findings and conclusions. Lacks Indus., 322 F.3d at 1347. We remanded the case with the instruction that “the district court (or Special Master) should resolve whether or not it needs to take additional evidence on sales practice in the automotive industry to determine if the sales promotion activities by Lacks rise to a contractual offer for sale (and, of course, take such evidence if necessary).” Id. at 1351. On remand, the Special Master determined that additional evidence regarding sales practice in the automotive industry was indeed warranted and that further discovery was also warranted to explore “what subsequently occurred in ... [Lacks’] sales promotional activities that [were] already of record.” After extensive discovery, the parties filed cross-motions for summary judgment on the issue of whether the 4a Remaining Claims were invalid under § 102(b) because of Lacks’ alleged on-sale activities. The Special Master found that five pre-critical date documents constituted commercial offers for sale, as defined in Group One. The district court adopted the Special Master’s Report and Recommendation in its entirety, denied Lacks’ motion for summary judgment on validity, and entered summary judgment of invalidity in favor of Defendants. Lacks timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). II. DISCUSSION A. Standard of Review We review a district court’s grant of summary judgment de novo. Ethicon EndoSurgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). By contrast, we give considerable deference to the trial court, and “will not disturb a trial court’s denial of summary judgment unless we find that the court has indeed abused its discretion.” Little Six, Inc. v. United States, 280 F.3d 1371, 1373 (Fed. Cir. 2002) (citation and quotation omitted). Summary judgment is appropriate when no genuine issue as to any material fact has been shown by the non-movant’s evidence and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). Thus, summary judgment may be granted when no “reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In deciding whether summary judgment is appropriate, we view the 5a evidence in a light most favorable to the opposing party and resolve doubts in its favor. Ethicon, 149 F.3d at 1315. This means all reasonable inferences must be drawn in the non-movant’s favor. At the same time, “in ruling on a motion for summary judgment, the judge must view the evidence presented through the prism of the substantive evidentiary burden.” Anderson, 477 U.S. at 254. B. Analysis The district court adopted the Special Master’s findings and conclusions that five documents constituted pre-critical date commercial offers for sale under § 102(b) and that, all of the Remaining Claims were invalid. The parties dispute: (1) whether any of the documents rises to the level of a commercial offer under the Group One standard; (2) whether some of the documents were communicated to the alleged offerees prior to the critical date; and (3) whether the subject matter of any of the alleged offers correlates to the methods of the Remaining Claims. To prevail on an on-sale bar defense, an accused infringer must demonstrate by clear and convincing evidence that there was a definite sale or offer for sale of the claimed invention prior to the critical date. Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1047 (Fed. Cir. 2001) (citation and quotation marks omitted). “Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under § 102(b).” Group One, 254 F.3d at 1048. In addition, to satisfy the on-sale bar, the subject matter of the sale or offer for sale must satisfy each 6a limitation of the claim, though it may do so inherently. Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1329 (Fed. Cir. 2001). Inherency, however, may not be established merely by probabilities or possibilities. Id. 1. The Correlation Between the Alleged Offers and the Methods of the Remaining Claims Lacks argues that the five documents cannot invalidate the Remaining Claims under the on-sale bar because they “do not unambiguously require practice of any of the methods of the Remaining Claims.” The Special Master rejected Lacks’ argument on three grounds: the law of the case, waiver, and the absence of affirmative evidence. We address each in turn. First, the Special Master noted that in the prior round of litigation, he had found that.“the assembly method that Lacks was offering to perform coincided with the subject matter of the Remaining Claims.” Acknowledging that we vacated and remanded the invalidity ruling, the Special Master nevertheless explained that “[nJothing is described as vacated except the ‘finding of invalidity.” He stated that his “earlier reliance on a later superseded legal standard to reach the ultimate conclusion of invalidity did not taint the underlying findings concerning such issues as ... the correlation between the assembly method that Lacks was attempting to commercialize and the method covered by the Remaining Claims.” Therefore, the Special Master concluded that his factual conclusions on the correlation issue “survived the Federal Circuit’s decision and are part of the mandate” and “constitute the law of the case.” We disagree. 7a The doctrine of law of the case generally bars retrial of issues that were previously resolved on appeal, assuming one was taken. Intergraph Corp. \v. Intel Corp., 253 F.3d 695, 697 (Fed. Cir. 2001). Issues not decided by the reviewing court in a prior proceeding are not covered by the law of the case doctrine. E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1218 (Fed. Cir. 2007) (citation and quotation omitted). In addition, courts may depart from the law of the case under certain circumstances, including the discovery of new and different material evidence that was not presented in the prior litigation, or an intervening change of controlling legal authority, or when the prior decision is clearly incorrect and its preservation would work a manifest injustice. Id. at 698. In the last appeal, we did not decide the correlation issue. We first note that the Special Master’s findings on correlation in the first round of litigation is insufficient as it includes only general conclusions, and no claim-by-claim and_ limitation-by-limitation analysis, as we show later in this opinion. More importantly, the five documents now at issue were not even part of the record then. We faced no factual findings by the Special Master on the correlation issue regarding these newly-discovered documents. Thus, we could not have affirmed, explicitly or implicitly, any factual finding not in existence at the time of the last appeal. The five specific documents were only discovered post-remand and then’ used for determination of the commercial offer for sale under the new Group One standard. They are substantially different from the evidence gathered and adjudicated under the prior, totality-of-cireumstances standard. 8a Therefore, law of the case does not settle the correlation issue. Similarly, in the last appeal, Lacks could not have challenged the correlation issue regarding these specific documents because they were not a part of the record. Accordingly, Lacks did not waive its no-correlation argument with respect to these five documents. Lastly, the Special Master faulted Lacks for “not com(ing] forward with any affirmative evidence that the offered assembly method was other than the patented method.” Here again, the Special Master erred. As we have previously stated, “lal nonmovant need not always provide affidavits or other evidence to defeat a summary judgment motion. If, for example, the movant bears the burden and its motion fails to _ satisfy that burden, the non-movant is not required to come forward with opposing evidence.” Zenith Elecs. Corp. v. PDI Comme’n Sys., 522 F.3d 1348, 1363 (Fed. Cir. 2008). In this case, Defendants, having the ultimate burden of proving invalidity by clear and convincing evidence, also have the initial burden of going forward with evidence to support their allegation that there is at ieast one such offer for sale that corresponds to the methods of Remaining Claims. On appeal, Defendants point to their Reply Briefin support of their motion for summary judgment. They argue that “the record includes a veritable mountain of case-by-case evidence that the process offered by Lacks in each of the Five Offers did indeed correspond to the invention of the Remaining Claims.” They assert that “[t]his evidence Ya constitutes a powerful prima facie showing” on the correlation issue. However, the portion of the Reply Brief that Defendants cite contains only vague, general statements. We discern neither claim-by-claim nor limitation-by-limitation analysis of whether the subject matter of any of the five alleged offers corresponds to the methods of any of the Remaining Claims.’ For example, Defendants assert that during the pre-critical date period, “Lacks focused exclusively on the invention of the Remaining Claims as the means for attaching a ‘closely-conforming’ cladding to a wheel.” We first observe that during the same time period, Lacks filed several other patent applications covering different methods for assembling an overlay to a wheel. Indeed, the ‘213 patent itself includes several other assembly methods. Such objective evidence appears to be in direct contradiction with Defendants’ assertion. At the very least, under the appropriate legal standard for summary judgment, when the evidence is viewed in a light most favorable to Lacks, we cannot conclude that the subject matter of any document satisfies each and every claim limitation of any of the Remaining Claims. See Scaltech, 269 F.3d at 1329. ' Under the patent statute, the validity of each claim must be considered separately. See 35 U.S.C. § 282 (“Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims... .”). The district court, in adopting the Special Master’s findings, erred in only considering a single claim in the analysis. 10a Because Defendants did not meet their initial burden to support their allegation “that the process offered by Lacks in each of the Five Offers did indeed correspond to the invention of the Remaining Claims,” the district court erred in adopting the Special Master’s findings on the correlation issue and in granting summary judgment of invalidity in Defendants’ favor. 2. The Pre-Critical Date Offers for Sale With respect to the pre-critical date offers, we hold that genuine issues of material fact exist as to whether any of the five documents in dispute rises to the level of a commercial offer or whether some of the alleged offerers were communicated to the offerees prior to the critical date. Therefore, the grant of summary judgment of invalidity in Defendants’ favor was inappropriate for this reason as well. For example, the Special Master concluded that “in accordance with the course of dealing and usage of trade in the automobile industry,” all five documents satisfied the Group One test for a commercial offer. It is true that when we remanded the case, we instructed that the district court should consider the sales practice in the automobile industry to determine if any of Lacks’ documents of its sales activities rises to a contractual offer for sale. Lacks Indus., 322 F.3d at 1351. On remand, Defendants’ experts submitted that in the automobile industry, an OEM, such as Chrysler, would often accept a supplier’s initial quote, such as a SCORE proposal, subject to possible future revision. However, Lacks’ witnesses testified that the purpose of submitting a SCORE proposal! was “first to garnish lif Chrysler is] even interested and then [if the lla proposal is] even valid... .” When viewing this record in a light most favorable to Lacks and resolving doubts in favor of Lacks, we cannot conclude that Defendants have established an automobile industry practice by clear and convincing evidence such that a reasonable fact-finder could not decide in Lacks’ favor. Similarly, one alleged offeree testified that there was no reason for him to think that he received a Lacks’ internal memorandum, an alleged offer, after the critical date. However, he also stated that because it had been so many years, his memory was very vague.” Another alleged offeree testified that he did not believe that another Lacks’ internal memorandum, also an alleged offer, was ever given to him by Lacks. We conclude, based on such evidence, especially when viewed in a light most favorable to Lacks, that there are genuine issues as to material facts regarding if and when the documents at issue were communicated to the alleged offerees. Because a reasonable fact finder could find that there is no clear and convincing evidence that these documents were communicated to * At oral argument, our attention was brought to the witness’s testimony stating that “there’s no reason for me to think it was after [the critical date,} 1 guess. I guess that’s awful[ly] vague. It’s been so many years.” When asked whether he considered this to be clear and convincing evidence, Defendants’ counsel answered “Yes!” We are aware of counsel’s zealousness in representing the clients. We are also mindful that this litigation has been drawn out for much too long. Still, we are hardpressed to equate “awful[ly) vague” speculation to clear and convincing evidence. It is our opinion that, an effective advocate would better serve the clients’ interests, and become a more trustworthy officer of the court, by using sound judgment to deal with less favorable facts, not by asserting questionable statements, even when under pressure. 12a the alleged offeree prior to the critical date and therefore, could return a verdict for Lacks, summary judgment of invalidity in favor of Defendants is inappropriate. Lacks asserts that the district court incorrectly denied its motion for summary judgment on validity. However, the trial court has discretion to deny a motion for summary judgment. Lacks does not argue, and we do not find, any abuse of discretion. Therefore, the district court’s denial of Lacks’ motion for summary judgment is affirmed. III. In sum, we affirm in part, reverse in part, and remand. We affirm the district court’s denial of motion for summary judgment to Lacks on validity. We reverse and remand the district court’s grant to Defendants summary judgment of invalidity. On remand, the district court should decide whether Defendants’ can establish by clear and convincing evidence: (1) that any of the five documents at issue rises to the level of a commercial offer for sale under the Group One standard; (2) if so, that the same document was communicated to an offeree prior to the critical date; and (3) that the subject matter of the document satisfies each and every claim limitation of any of the Remaining Claims. We assume that the district court (or the Special Master) will apply the correct legal standard in the further proceedings consistent with this opinion. If it does not find the Remaining Claims invalid, the court must then determine the extent of the damages Lacks suffered as a result of the infringement of the Remaining Claims by Defendants. l3a APPENDIX B UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION No. 96-75692 [Filed November 20, 2007] LACKS INDUSTRIES, INC., a Michigan Corporation, Plaintiff, -vVS- McKECHNIE VEHICLE COMPONENTS USA, Inc., dba THOMPSON INTERNATIONAL, a Delaware Corporation, and HAYES WHEEL INTERNATIONAL, INC., a Delaware Corporation, Defendants el ll Hon. John Feikens Richard D. Grauer, Special Master l4a ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT Before the Court are the parties’ cross-motions for summary judgment on the dispositive issue of whether the Remaining Claims (claims 11-13, 20-22 and 24-25) of U.S. Patent No. 5,597,213 are invalid under 35 U.S.C.§102(b) because of alleged on-sale activities of Plaintiff Lacks Industries, Inc. Pursuant to a series of Orders of Appointment, including this Court’s Second Amended Order of Appointment of Special Master, dated December 13, 2006, these motions were referred to Special Master Richard D. Grauer. The Master's Report and Recommendation, dated August 15, 2007, recommended that Defendants’ motion for summary judgment of invalidity of the Remaining Claims be granted, and that Plaintiffs motion for summary judgment that the Remaining Claims are valid and intringed be denied. Plaintiff filed its written Objections to the Report and Recommendation, and Defendants subsequently filed their Joint Response to such Objections. The Court has considered the Report and Recommendation, as well as Plaintiffs Objections and Defendants’ Joint Response. Paragraph 8 of the Second Amended Order of Appointment directed that the Special Master’s findings of fact will be final, as permitted by Rule 53(g)(3)B), Fed. R. Civ. P. The parties did not object to that procedure. Upon due consideration, the Court adopts the findings of fact contained within the August 15, 2007 Report and Recommendation. 15a Aided by Plaintiffs Objections and Defendants’ Joint Response, and as required by Rule 53(g)(4), the Court has considered de novo the Special Master’s recommended conclusions of law. The Court finds Plaintiffs objections thereto to be without merit, and therefore adopts those recommended conclusions of law. The Court has also noted the Master’s “Additional Considerations” (pp. 78-83 of the Report and Recommendation), and_ specifically endorses the analysis and conclusions presented therein. Accordingly, THE COURT HEREBY ADOPTS the Special Master’s Report and Recommendation of August 15, 2007, and ITIS HEREBY ORDERED that: 1. Defendants’ Joint Motion for Summary Judgment that the Remaining Claims U.S. Patent No. 5,597,213 are invalid is GRANTED; and 2. Plaintiffs Motion for Summary Judgment that such claims are valid and infringed by Defendants is DENIED. s/John Feikens John Feikens United States District Judge Dated: 11/20/2007 16a UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION No. 96-75692 [Filed November 20, 2007] LACKS INDUSTRIES, INC., a Michigan Corporation, Plaintiff, -VS- McKECHNIE VEHICLE COMPONENTS USA, Inc., dba THOMPSON INTERNATIONAL, a Delaware Corporation, and HAYES WHEEL INTERNATIONAL, INC., a Delaware Corporation, Defendants Ne eee ee Se” Hon. John Feikens Richard D. Grauer, Special Master FINAL JUDGMENT The Special Master’s Report and Recommendation of August 15, 2007 in the above-captioned matter having been considered by the Court, along with Plaintiffs Objections and Defendants’ Joint Response, and the Court having adopted the Report and Recommendation and granted Defendants’ Joint 17a Motion for Summary Judgment by a separate Order of this date: IT IS HEREBY ORDERED, ADJUDGED AND DECREED that: 1. Final judgment is entered in favor of Defendants on all of Plaintiff's claims, and Plaintiffs claims are dismissed with prejudice; 2. The Remaining Claims (claims 11-13, 20-22 and 24-25) of U.S. Patent No. 5,597,213 are invalid under 35 U.S.C.§102(b); and 3. Costs shall be allowed to Defendants and taxed against Plaintiff. s/John Feikens John Feikens United States District Judge Dated: 11/20/2007 18a APPENDIX C IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION No. 96-75692 [Filed August 15, 2007] LACKS INDUSTRIES, INC., Plaintiff, Ve McKECHNIE VEHICLE COMPONENTS USA, INC., d/b/a THOMPSON INTERNATIONAL; HAYES WHEEL INTERNATIONAL, INC.; and HAYES WHEELS INTERNATIONAL- MICHIGAN, INC. Defendants ee ee ee ee ee ee ee ee Hon. John Feikens Richard D. Grauer, Special Master Special Master’s Report And Recommendation On Cross-Motions For Summary Judgment Concerning Patent Invalidity Defense Based On Alleged On-Sale 19a I. Background Before the Court are the parties’ cross-motions concerning the one remaining defense in this patent infringement lawsuit, namely, whether certain claims of U.S. Patent No. 5,597,213 (“the ‘213 Patent) are invalid under 35 U.S.C. §102(b) by virtue of an alleged on-sale of the claimed invention by patent-owner Lacks Industries (“Lacks”). Specifically, the invalidity defense concerns claims 11-13, 20-22 and 24-25 (“the Remaining Claims”) that remained after an earlier summary adjudication of the other originally asserted claims. An understanding of the several legal and factual issues addressed here requires familiarity with the procedural history of this long-pending lawsuit. By “Stipulation and Order Regarding Appointment of Special Master,” dated February 15, 2000, the Special Master was directed to “make all factual findings and legal conclusions necessary to determine” whether the method used to assemble Defendants’ accused products infringed the Remaining Claims of the ‘213 patent, and whether such claims are invalid under 35 U.S.C.§102(b) because of either Lacks’ own “on sale” activities or Defendants’ “on sale” or public use activities more than one year before the filing date of the ‘213 Patent. Following a five-day bench trial of the liability phase in June, 2000, the Special Master found that (1) Defendants iiad literally infringed all of the Remaining Claims of the ‘213 Patent; (2) the Remaining Claims were not invalid as a result of any prior offer for sale or public use by Defendants; but (3) the Remaining Claims were invalid as a result of Lacks’ own 20a pre-critical date “on sale” activities in violation of Section 102(b). After a hearing on the parties’ respective objections, and amendments by the Special Master to his original Report and Recommendation (hereafter, “Amended Liability R & R”), the District Court adopted the Special Master’s amended findings and conclusions of April 17, 2001 in their entirety, and entered judgment against Lacks on April 23, 2001. On appeal and cross-appeal to the Court of Appeals for the Federal Circuit, the Court, inter alia, affirmed the District Court’s finding of literal infringement of the Remaining Claims of the ‘213 Patent and the finding that those claims had not been proven invalid as a result of the pre-critical date public use or on-sale activities of the Defendants.’ With respect to the finding that Lacks’ own on-sale activities violated Section 102(b), the Court concluded that the Special Master and District Court erred by applying an outdated legal standard’ that had been superseded by the Federal Circuit’s later decision in Group One, Limited v. Hallmark Cards, 254 F.3d 1041, 1048 (Fed. Cir. 2001). The Federal Circuit's Group One decision, in turn, was based upon its interpretation of the 1998 U.S. Supreme Court decision in Pfaff v. Wells ' Lacks Industries, Inc. v. McKechnie Vehicle Components USA, Inc. et al, 322 F.3d 1335, 1351 (Fed. Cir. 2003). ?In RCA Corp. v. Data Gen. Corp., the Court had held that “[t}he requirement of a definite offer excludes merely indefinite or nebulous discussion about a possible sale .... [T]he requirement may be met by a patentee’s commercial activity which does not rise to the level of a formal ‘offer’ under contract law principles ....” 887 F.2d 1056, 1062 (Fed. Cir. 1989) (emphasis in original). 2la Electronics, Inc., 525 U.S. 55, which held in pertinent part: We conclude, therefore, that the on-sale bar applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the first commercial marketing of his invention. The experimental use doctrine, for examplc, has not generated concerns uncertainty should attend a rule that measures the application of the on-- sale bar of Section 102(b) against the date when an invention that is ready for patenting is first marketed commercially... . Second, the invention must be ready for patenting. ... Id. at 67 (emphasis added). The first condition or prong of Pfaffs two-part test is the one that the Federal Circuit further defined in Group One, as follows: “(O|nly an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under §102(b).” 254 F.3d at 1048. In view of that intervening re-definition of what constituted an invalidating on sale, the Federal Circuit vacated the District Court’s conclusion that Lacks’ own on-sale activities violated Section 102(b) and remanded this case, as follows: 22a Finally, we vacate and remand the court’s adoption of the Special Master’s finding that claims 11-13, 20-22 and 24-25 of the ‘213 patent were invalid as a result of Lacks’ pre-critical date commercial activities because he applied an outdated lega) standard. On remand, the district court (or Special Master) should resolve whether or not it needs to take additional evidence on sales practice in the automotive industry to determine if the sales promotion activities by Lacks rise to a contractual offer for sale (and, of course, take such evidence if necessary). 322 F.3d 1335, 1351 (emphasis added). Also pertinent to the scope of the Mandate are the following additional comments by the Federal Circuit: According to the defendants, Lacks’ activities amounted to a contractual offer for sale because ‘that is how business is done in the automotive industry.’ We, however, cannot so conclude as a matter of law on the record before us. Although it contains some evidence about how sales are made in the automotive industry, we cannot tell what the fact-finder would have found had he applied the correct legal standard. In fact, the only evidence of industry practice defendants point out to us on appeal is their unsupported description of their own sales experience with Ford. As a result, we vacate the Special Master’s finding of invalidity and remand for further consideration. On remand, the district court (or Special Master) may need to take additional evidence on the practice in the 23a industry to determine if the activities by Lacks rise to an offer for sale under the UCC. It may also be possible to make new fact-findings based on the existing record. We leave this determination to the court’s sound discretion. 322 F.3d at 1348 (emphasis added). With respect to the “ready for patenting” second prong of Pfaff, the District Court had earlier found that the invention of the Remaining Claims was ready for patenting in May, 1992. 55 F. Supp. 2d 702, 734 (E.D. Mich. 1999). Additional evidence and findings in the Special Master’s Amended Liability R & R were consistent with that finding. The parties now dispute whether the earlier rulings concerning the second prong, as well as those still relevant to the first prong of Pfaff, are governed by the law of the case. That issue is addressed in a separate Section IIJ-C below. II. Discussion A. Relevant Contract Law Principles The Federal Circuit’s earlier 2001 Group One decision stated that the existence of an offer for sale should be analyzed “under the law of contracts as generally understood,” and, consistent with the present mandate, also noted that “[aJs a general proposition, we will look to the Uniform Commercial Code (‘UCC’) to define whether, as in this case, a communication or series of communications rises to the level of a commercial offer for sale.” 254 F.3d at 1047. 24a But as the Federal Circuit noted shortly thereafter, “(t]he UCC does not define ‘offer,’ so we will look to the common law to guide our inquiry.” Linear Technology Corp. v. Micrel, Inc., 275 F.3d 1040, 1050 (Fed. Cir. 2001). Further noting that the UCC is a model code that has been adopted in different versions by the states, the Court determined that it “will search [the body of state and federal decisions] for the common denominator for assistance in crafting the federal common law of contract that now governs the on-sale bar.” Id. at 1048. See also, Group One, supra, 254 F.3d at 1047. The relevance of the UCC to the present case is also limited by the fact that it applies to the sale of goods, not methods or services. The UCC provides that “(ujnless the context otherwise requires, this Article [Article 2 — Sales] applies to transactions in goods” (§2-102, emphasis added). “Goods,” in turn, are defined in pertinent part as “all things (including specially manufactured goods) which are movable at the time of identification to the contract for sale other than the money in which the price is to be paid, investment securities (Article 8) and things in action’ (§2-105(1)). The present issue concerns whether the method of the Remaining Claims was the subject of a commercial offer for sale. A method is the performance of a series of steps, and therefore is in the nature of a service, not goods. While an offer to sell a product (here, a cladded wheel) that was assembled in accordance with that method would be one way to establish an offer to sell the method, that is not the only way such an offer may be proven. This question of the necessary elements of an on-sale of a patented method is further discussed in Section II-B, infra. 25a In Group One, the Federal Circuit held that a qualifying offer under 35 U.S.C.§102(b) is one “which the other party could make into a binding contract by simple acceptance (assuming consideration).” 254 F.3d at 1048. In Linear Technology, the Court quoted from Restatement (Second) Contracts, §24 (1981), which defines an offer as “the manifestation of willingness to enter into a bargain, so made as to justify another person in understanding that his assent to that bargain is invited and will conclude it.” 275 F.3d at 1050. However, as stated in §26, also cited by the Court: “manifestation of willingness to enter into a bargain is not an offer if the person to whom it is addressed knows or has reason to know that the person making it does not intend to conclude the bargain until he has made a further manifestation of assent.” Williston, another noted secondary authority, states that: “The only gencral test for determining in any particular case whether an offer exists is to ask whether the facts show that some performance was promised in positive terms in return for something requested by the person making the promise, and asking whether the person to whom the manifestation is made might reasonably have supposed that by acting in accordance with it a contract could be concluded.” Richard A. Lord, WILLISTON ON CONTRACTS §4.7, at 296-97 (4'" ed. 1990). 26a To determine whether a communication is an offer, Corbin states that the court tries to determine “the meaning given to the words and actions” by the speaker and by the person to whom they were communicated. Joseph M. Perillo, CORBIN ON CONTRACTS §2.2, at 107 (Rev. ed. 1993). Continuing, Corbin observes that: Id. Fisher-Price, Inc. v. Safety 1, Inc., 2004 U.S. App. “Factors to consider include the ordinary meaning of the language; the context of any prior communications between the parties; whether the communication was private or to the general public; any previous course of dealings between the parties; local usage or usage of the trade; the relative completeness of the terms (the more complete, the more likely it is an offer); the subject matter of the offer; and whether it is foreseeable that the recipient would rely upon it.” at 109-10. Finally, in 2004, the Federal Circuit noted: “In sum, whether or not the alleged offer in this case rose to the level of a commercial offer for sale is a factual question to be judged in view of the circumstances surrounding its making, taking into account such factors as the status of negotiations, the language of the documents, the terms of any previous inquiry, and the prior course of dealings between the parties lsecondary source citations omitted].” LEXIS 17110, **10 (emphasis added). 27a Notwithstanding the Federal Circuit’s direction that inquiry is to be made into the “circumstances surrounding {the alleged offer’s] making,” Lacks accuses Defendants of trying to resurrect the “totality of circumstances” analysis that was rejected in Group One and Pfaff. But that very analysis is clearly what the Federal Circuit has endorsed and directed. The Federal Circuit’s mandate in the present case directs the District Court to examine, and possibly take additional evidence on, the “sales practice in the automotive industry.” 322 F.3d at 1351. See also, Id. at 1348. Sales practices are comprised of a series of customary actions and circumstances. Furthermore, the fact that Pfaff replaced the “totality of circumstances” on-sale bar analysis with the two-prong test, requiring (1) a commercial offer for sale and (2) the invention be ready for patenting, does not ipso facto prohibit reliance upon those surrounding circumstances that both judicial and secondary authorities generally apply to the inquiry required by the “commercial offer” prong. Lacks errs in conflating these two distinct uses of the “circumstances” phraseology. In Group One, Linear, Lacks and Fisher-Price, the Federal Circuit has defined the Supreme Court’s “commercial offer of sale” prong in a way that compels and fully justifies Defendants’ detailed presentation of a circumstance-based analysis of the issue. Although the UCC does not directly apply to the present issue of an on-sale of a method, the UCC-defined terms, “course of dealing” and “usage of trade” may still be useful in the mandated inquiry into “sales practice in the automotive industry.” Under UCC §1-303(b), a “course of dealing is a sequence of conduct concerning previous transactions between the 28a parties to a particular transaction that is fairly to be regarded as establishing a common basis of understanding for interpreting their expressions and other conduct” (emphasis added). Section 1-303(c) provides in pertinent part that a “usage of trade is any practice or method of dealing having such regularity of observance in a place, vocation or trade as to justify an expectation that it will be observed with respect to the transaction in question. The existence and scope of such a usage must be proved as facts” (emphasis added)’ Sub-section (d) further states that these terms, along with “course of performance’ (?.e., conduct under or after an agreement), “are relevant in ascertaining the meaning of the parties’ agreement, may give particular meaning to specific terms of the agreement, and may supplement or qualify the terms of an agreement.” Finally, sub-section (e) provides that if it is not reasonable to construe these concepts consistent with each other, then express terms (of an agreement) prevail over course of performance, course of dealing, and usage of trade; course of performance prevails over course of dealing and usage of trade; and course of dealing prevails over usage of trade. Of these UCC-defined terms, “course of dealing” and “usage of trade” appear to offer the most guidance to the present facts and issues. ° These sections were found in Section 1-205 (“course of dealing” has been slightly amended), as cited by the parties in their pleadings on the present motion. The amendments appear in text bearing “Copyright 2004, by The American Law Institute and National Conference of Commissioners on Uniform State Laws.” The draft of these revisions was dated December 31, 2001. 29a Lacks stresses that, both at common law and under the UCC, course of dealing and usage of trade may be used to explain ambiguities in an agreement or to add missing terms, but cannot be used create an agreement where none previously existed. Defendants agree. Consistent with the definition of “course of dealing,” Defendants contend that sales practices in the automotive industry can be used to establish a “common basis of understanding for interpreting their expressions and other conduct,” whereby a particular communication would reasonably have _ been interpreted as an offer, consistent with the Restatement definition cited in Linear Technology. Lacks does not disagree with that general proposition. Rather, it contends that Defendants are improperly attempting to use industry practice, whether in the form of a course of dealing or usage of trade, to supply the missing manifestation of intent to make an offer that the other party could reasonably believe would conclude the bargain if accepted. As will be discussed further below, industry practices in the automotive industry are characterized by a sequence of steps and relatively informal documentation that precede issuance of the type of formal documentation and purchase orders typically found in conventional commercial transactions in other industries, but yet may be accepted and treated by industry members as potentially binding. The test defined by Group One is whether the offer in question is one “which the other party could make into a_ binding contract by simple acceptance (assuming consideration)” (emphasis added). It is not *UCC §1-303b, supra. 30a whether a given offerce would accept the offer. An offeree might reject an offer form many reasons, é.g., unfavorable terms, lack of need for the product or service, or poor reputation of the offeror or the offered product or service. Or, as will be shown below in the case of the automotive industry, the offeree/OEM may have substantial interest in the offered product or service, and find the offered terms acceptable, but nevertheless consider acceptance premature because of the offeree/OEM’s need to conduct its own approval testing or further development; or because numerous revisions in the product design after the OEM has selected a particular supplier (“sourced” the product) would otherwise require costly issuance of revised purchased orders following each part design change; or because specific purchasing procedures may mandate that the OEM’s purchase order (generated many months or even years later) be treated as the formal “offer.” Under that course of dealing and usage of trade, both parties have “a common basis of understanding” that the initial quotation or offer would not be accepted until much later, and only then after formalized procedures and paperwork were completed. But in the meanwhile, the offeree’s actions (such as joint development work) may signal (7.e., generate the “expectation”) that there is a deal. As with any contract, it may be subject to modification as the development project proceeds, or even total cancellation if the OEM cancels the project. But under contract law, the early offer would have been binding if it had been accepted. Nothing in Group One suggests to the Special Master that inquiry into these offeree/OEM 3la motivations or restraints is or should be material to the disposition of an on sale bar issue under the controlling patent law. Rather, the test appears to be: would the offer be binding on the offeror/supplier if it were acceptec by the OEM, not would the offer conceivably have been accepted at that early point in the typical pre-production sequence of steps. B. Commercial Offer of Method Claims The Remaining Claims are method claims, each directed to a series of steps for assembling an overlay or cladding to a wheel. For present purposes, claim 11 of the ‘213 Patent is representative: 11. A method for assembling an overlay to a wheel having a disk portion and a rim portion circumscribing said disk portion, said disk and rim portions defining an outboard surface of said wheel, said method comprising the steps of: forming said overlay to have an inboard surface configured to face said outboard surface of said wheel upon assembling said overlay to said wheel, said overlay being configured so as to form a gap between said inboard and outboard surfaces upon assembling said overlay to said wheel; selectively depositing a curable adhesive on at least one of said inboard and outboard surfaces such that said curable adhesive is between said overlay and said wheel upon assembling said overlay with said wheel, said curable adhesive being deposited in an amount that is insufficient to entirely fill said gap; and 32a assembling said overlay to said outboard surface of said wheel with said curable adhesive so as to form said gap and permanently secure said overlay to said wheel, at least one void being present between said overlay and said outboard surface of said wheel. The parties disagree on what must be shown to establish a commercial offer of an invention that is a method, rather than a physical product. Lacks relies upon Jn re Kollar, 286 F.3d 1326 (Fed. Cir. 2002), for the proposition that Defendants must establish that an offer was made to sell a product in which the claimed method had actually been practiced or performed. Defendants dispute that Kollar or any other authority so holds, contending that all that is required is that Lacks have made a commercial offer to perform the steps of the claimed method, without the further requirement that there was an offer to sell a fully-assembled composite wheel in which the claimed method had actually been practiced to make the assembly. Kollar does not support Lacks’ position. The facts there concerned an executed agreement entered for the purpose of conducting research and development, providing for the disclosure of technical information concerning the later-patented process and the grant of a patent license authorizing the operation of plants and the sale of products made by such process. /d. at 1330. The agreement contained no indication “that a product of the claimed process was actually offered for sale.” Ibid. The USPTO had held that this pre-critical date agreement constituted a firm offer to sell embodiments of the claimed process, thus tnggering 33a the §102(b) bar. The Federal Circuit reversed, holding that the agreement was merely a license under future patents, and restating the general rule that “merely granting a license to an invention, without more, does not trigger the on-sale bar of §102(b).” Jd. at 1330-31. More to the point concerning patented processes, the Court noted that: We cannot articulate in advance what would constitute a sale of a process in terms of the on-sale bar. Surely a sale by the patentee or licensee of the patent of a product made by the claimed process would constitute such a sale because that party is commercializing the patented process in the same sense as would occur when the sale of a tangible patented item takes place. ... Actually performing the process itself for consideration would similarly trigger the application of §102(b). See Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1328, 60 USPQ2d 1687, 1691 (Fed. Cir. 2001)(holding that a claim to a process for treating oil refinery waste was invalid under §102(b) because the patentee offered to perform the claimed process more than one year before filing for a patent). 286 F.3d at 1333 (emphasis added). Significantly, in vacating the USPTO’s holding that the claimed process was on sale within the meaning of §102(b), the Court stated that the USPTO Board, on remand, may inquire both as to whether there was a pre-critical date offer “for sale of a product made using that process... [or an act} that commercially exploits the claimed process by offering to actually perform _that process to commercially produce [various compounds]” (citing 34a Scaltech, supra) (italics in original, underlining added). 286 F.3d at 1334. Notably, the Federal Circuit in the cited Scaltech case further held that “the fact that the process itself was not offered for sale but only offered to be used by the patentee to process waste does not take it outside the on sale bar rule.” 269 F.3d at 1328 (emphasis added). The particular pertinence of that holding will become evident in the subsequent analysis of the facts of the present case. Unlike the facts in Kollar, the present case does not involve either the grant of a license, the transfer of know-how or an offer to transfer such rights. Furthermore, Lacks’ argument, quoted below, appears to be based on a failure to distinguish between Kollar’s discussion of an alleged sale of a patented process (7.e., the intangible rights in the executed license agreement) and the present case’s alleged commercial offer to perform the patented wheel-cladding process. Lacks contends: The Remaining Claims are a method for assembling a cladded wheel. As such, under Kollar, because it is a process, it must be carried out or performed as a result of the transaction to constitute a sale of the invention within the meaning of §102(b). Kollar at 1332-33. In other words, until there is an offer to sell a tangible product upon which the claimed method was practiced or performed, the claimed process is not on sale for the purposes of the §102(b) on-sale bar. 35a Lacks’ Brief of November 23, 2005, p.19. This misreading of Kollar seems to be fundamental to Lacks’ opposition to the on-sale defense. The cited support in Kollar refers to the executed know-how transfer and license in that case, which the Court was treating as_sale of such rights, rather than an “on sale.” Hence, the Court’s reference to the absence of actual performance of the patented process: “Know-how describing what the _ process consists of and how the process should be carried out may be sold in the sense that the buyer acquires knowledge of the process and obtains the freedom to carry it out pursuant to the terms of the transaction. However, such a transaction is not a ‘sale’ of the tnvention within the meaning of $102(b) because the process has not been carried out or performed as a result of the transaction. The same applies to a license to a patent covering a process. The [USPTO] Board in this case failed to recognize this distinction, and therefore erred in concluding that the license to the process under any future patents and the accompanying description of that process, constituted a sale of the subject matter of those patents, viz., the process.” 286 F.3d at 1332 (emphasis added). Lacks’ apparent reliance on this particular language is misplaced for two reasons. First, the statement deals with a mere license (an intangible property right), not an offer to physically perform a patented process. Second, its reference to actual performance of the process was in the context of a completed sale or transfer of the know-how and licensed rights, an element of proof not required here, where the alleged triggering event is a 36a patent-barring offer to perform the patented process. See, Scaltech, supra. Thus, Kollar merely holds that sale of a product made according to the patented process is sufficient to trigger the on-sale bar, not that such a sale of the resulting product is necessary. Lacks also cites Elan Corp. v. Andrx Pharm., Inc., 366 F.3d 1336, 1341 (Fed. Cir. 2004) and Minton v. Nat'l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373 as cases that “recently followed” Kollar. Neither case supports Lacks’ position. Elan held that an offer to enter a license under a patent for future sale of a product invention is not an offer to sell the patented invention. Minton held that a lease that actually conveyed a fully operational computer program embodying the claimed process was an offer for sale within the meaning of the on-sale bar. Neither case dealt with the issue of whether an offer to perform the steps of a claimed method triggers an on-sale bar under §102(b). Neither precedent, public policy nor logic suggests any reason that an offer to perform a ready-for-patenting process for consideration should be less sufficient to satisfy §102(b) than an offer to sella ready-for-patenting product for consideration. In both cases, the claimed invention is being offered. Scaltech, Inc., supra, 269 F.3d at 1328. C. Law of the Case The Court found that the invention of the Remaining Claims was ready for patenting in May, 1992. 55 F. Supp. 2d 702, 734 (E.D. Mich. 1999). The Special Master’s Amended Liability R & R, adopted by 37a the District Court, noted that the patentee Chase had admitted that one skilled in the art could practice the invention from a May 26, 1992 Lacks drawing. Amended Liability R & R at 61. A Chase-authored chronology (Trial Exh. 58) stated that Lacks had“satisfactorily completed all testing” by October, 1993, and “released product to sales and marketing staff’ in January, 1994 (Amended Liability R & R at 72). Furthermore, Lacks admitted that the invention of the Remaining Claims was ready for patenting before the June 6, 1994 critical date. Id. at 61. That earlier trial record thus established that the second prong of the Pfaff on-sale test had been proven. The Amended Liability R & R also made extensive findings of fact pertinent to the first prong of Pfaff. Among them were the following findings concerning Lacks’ pre-critical date efforts to promote customer interest in and sales of the wheel cladding assembly method of the Remaining Claims: Lacks is not a wheel manufacturer. Presently, Lacks is both a tier one and tier two supplier. As a tier one supplier, it purchases wheels from the wheel manufacturer, assembles the overlay to it and ships the composite wheel to the OEM. As a tier two supplier, Lacks does not purchase the wheel but the wheel travels the same path, with Lacks performing the assembly steps for the wheel manufacturer. Therefore, a potential Lacks customer might be either the tier one wheel manufacturer or the OEM. In both cases, Lacks would manufacture the overlays and perform the assembly steps of the claimed method .... 38a The record abundantly establishes a thorough and extensive campaign by Lacks to exploit competitively, to use for profit and to commercialize the ready-for-patenting method, commencing two years before the June 6, 1994 critical date. After the May, 1992 ready-for patenting date, Lacks made pre-critical date commercialization efforts with both wheel manufacturers and OEMs. Lacks widely promoted the use of a specific composite wheel assembly technique, namely, the assembly technique of its later-granted method claims, to make wheels for any and all future vehicle models. Its sales solicitations took the form of demonstrations of physical samples. of prototypes made in accordance with the asserted method claims, and repeated sales contacts with the same potential customers to highlight the advantages of the resulting products. Amended Liability R & R at 71-72 (italics in original; underlining added). The Special Master finds that the activities summarized above were primarily motivated by Lacks’ desire to commercialize its later-patented method of assembling overlays to wheels. Throughout the May, 1992 to June 6, 1994 period, Lacks (1) vigorously solicited wheel manufacturers to whom Lacks could sell overlays and on whose wheels Lacks could perform its overlay-bonding method, and (2) and vigorously solicited OEMs to specify and purchase wheels clad by the later-patented method. The documentary references’ to 39a “development programs” involved programs to design and submit specific wheels to OEMs for their customer acceptance and_ validation testing. These programs were not the inventor’s programs of experimentation to perfect the patented method itself. Well before the critical date, Lacks’ own test results were sufficiently conclusive that any remaining interest by Lacks in having potential customers perform tests was incidental and far subordinate to its dominant commercial motivation to persuade the customers to evaluate the resulting product and satisfy themselves that it was acceptable for their purchase and use. Id. at 77-78 (Gtalics in original; underlining added). Lacks’ own contemporaneous documentation and trial testimony, summarized above, abundantly establish that (1) the assembly method that Lacks was offering to perform corresponded precisely with the invention of the Remaining Claims, and (2) the overlays and composite wheels that it was offering to sell in conjunction with a _wheel-manufacturing partner were to be made by the claimed method. * * * * Lacks’ own documents and testimony negate its attempt to bring its customer contact activity within the experimental use exception. Id. at 75-81 (emphasis added). The parties now dispute whether those earlier findings, indeed, whether any of the earlier findings of fact relating to the on-sale defense, survived the 40a Federal Circuit’s decision vacating the judgment of invalidity and its remand for further consideration in the light of the intervening Group One standard and sales practices in the automotive industry. Defendants contend that, under the law of the case doctrine, the following findings concerning previously litigated issues became the law of the case and continue to govern the present continuing adjudication of the on-sale defense: (1) Lacks’ pre critical date activities were not undertaken merely to gauge market interest; (2) the invention of the Remaining Claims had been sufficiently tested to negate any claim of “experimental use;” and (3) the assembly method that Lacks was attempting to commercialize to Ford, Chrysler, Motor Wheel and Accuride during the 1992-94 time period was the method covered by the Remaining Claims. According to Defendants, Lacks waived any challenge to those findings because Lacks failed to contest them on appeal to the Federal Circuit, and the Federal Circuit implicitly adopted such findings in its decision and mandate. To the contrary, Lacks contends that the law of the case doctrine does not apply here because: (1) the Federal Circui. did not consider or adopt any of the on-sale findings of the District Court; (2) the vacating of the on-sale portion of the judgment by the Federal Circuit extinguished all underlying findings of fact; (3) the doctrine does not apply where, as here, there has been an intervening change in the law or discovery of new and highly pertinent evidence.” * During the course of the present remand proceedings, Lacks filed a motion requesting that the Court reconsider its 1999 summary 4la Under the law of the case doctrine, “findings made at one point in the litigation become the law of the case for subsequent stages of that same litigation.” U.S. v. City of Detroit, 401 F.3d 448, 452 (6" Cir. 2005), quoting U.S. v. Moored, 38 F.3d 1419, 1421 (6" Cir. 1994). In Exxon Corp. v. U.S., 931 F.2d 874 (Fed. Cir. 1991), the Federal Circuit summarized the doctrine as follows: The law of the case is a judicially created doctrine, the purposes of which are to prevent the relitigation of issues that have been decided and to ensure that trial courts follow the decisions of appellate courts. The doctrine requires a court to follow the decision on a question made previously during the case... . When a judgment of a trial court has been appealed, the decision of the appellate court determines the law of the case, and the trial court cannot depart from it on remand. judgment ruling (discussed above) that the invention of the Remaining Claims was ready for patenting as of May 1992. Lacks contended that the law of the case doctrine did not preclude the requested reconsideration because of (1) an alleged intervening change in the controlling law, and (2) the Court of Appeals for the Federal Circuit had vacated this Court’s decision invalidating the Remaining Claims concurrently with the present remand. The District Court’s Order of February 14, 2007 adopted the Special Master’s Amended Report and Recommendation on Lacks’ Motion for Reconsideration of Seven- Year-Old Summary Judgment, dated December 18, 2006, that recommended denial of that motion. Much of the following analysis of the applicability of the law ofthe case doctrine to the present issue concerning the first prong of the Pfaff test is taken from that December 18, 2006 R & R. 42a 931 F.2d at 877 (quoting from Jamesbury Corp uv. Litton Indus. Prod. Inc., 839 F.2d 1544, 1550 (Fed. Cir. 1988). The Court also noted that the foregoing statement about the law of the case doctrine “is commonly accepted in federal jurisprudence, and should be considered the law of the Federal Circuit as well.” Jbid. at n.4. Clearly, the trial court “is without choice in obeying the mandate of the appellate court,” In re Roberts, 846 F.2d 1360, 1363 (Fed. Cir. 1988), and it “must implement both the letter and the spirit of the mandate, taking into account the appellate court’s opinion and the circumstances it embraces.” Brunet v. City of Columbus, 58 F.3d 251, 254 (6 Cir. 1995). As a general proposition, Lacks appears to be correct in asserting that “a vacated judgment has no preclusive force either as a matter of collateral or direct estoppel or as a matter of the law of the case.” Rumsfeld v. Freedom NY, Inc., 329 F.3d 1320, 1332 (Fed. Cir. 2003). “(W]hen a judgment is vacated ‘all is effectively extinguished.” Falcon v. Gen. Tel. Co, 815 F.2d 317, 320 (1987). But a vacated judgment accompanied by a remand with specific instructions to the lower court requires further analysis. The Exxon decision, cited by both parties, quoted with approval 1B Moore’s Federal Practice, 10.404[10] at 174 (2d ed. 1988), as follows: In the case of a remand for further proceedings, the mandate constitutes the law of the case only on such issues of law as were actually considered and decided by the appellate court, or necessarily to be inferred from the disposition on appeal. 43a 931 F.2d at 877, fn.7 (Fed. Cir. 1991) (emphasis added). See also, Laitram Corp. v. NEC Corp., 115 F.3d 947, 951 (Fed. Cir. 1997) (“.. . rule is actually applicable only to those issues decided by necessary implication.”) (emphasis added). Application of the law of the case doctrine to the District Court’s underlying on sale findings therefore requires analysis of the Federal Circuit’s opinion in this case to ascertain what was intended by its mandate. Laitram, supra, 115 F.3d at 952. As stated by the Federal Circuit, “(tlhe crux of the dispute is whether the Special Master applied the proper legal standard to the first prong of the test: whether there was a ‘commercial offer for sale.” 322 F.3d at 1347. The relevant portion of the Federal Circuit’s opinion states: Defendant-cross appellants urge that any such error [failure to apply the Group One standard for “commercial offer for sale”] was harmless because the factors that inform whether there was a contractual offer under the UCC include course of dealing and evidence of the practice in the industry. U.C.C. §1-205. According to the defendants, Lacks’ activities amounted to a con.ractual offer for sale because “that is how business is done in the automotive industry.” We, however, cannot so conclude as a matter of law on the record before us. Although it contains some evidence about how sales are made in the automotive industry, we cannot tell what the fact-finder would have found had he applied the correct legal standard. * * a 44a As a result, we vacate the Special Master’s finding of invalidity and remand for further consideration. On remand the district court (or Special Master) may need to take additional evidence on the practice in the industry to determine if the activities by Lacks rise to an offer for sale under the UCC. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc. and Hayes Wheels Int'l, Inc. , 322 F.3d 1335, 1348 (Fed. Cir. 2003) (emphasis added). Once again, in its summary of its holdings on the multiple issues that were appealed, the Court stated: On remand, the district court (or Special Master) should resolve whether or not it needs to take additional evidence on sales practice in the automotive industry to determine if the sales promotion activities by Lacks rise to a contractual offer for sale (and, of course, take such evidence if necessary). Id. at 1351 (emphasis added). Nothing is described as vacated except the “finding of invalidity.” No criticism, or even discussion, of the underlying factual findings appears in the Court’s opinion, except regarding the incompleteness of findings regarding “how sales are made in the automotive industry.” Only the legal standard applied by the Special Master is found to be erroneous. Most °As discussed below in this section, Lacks’ appeal only challenged “the Special Master’s application of the pre-Group One standard as to what. constituted a definite offer for sale.” 45a significantly, the Court states that additional evidence “may” need to be taken, implicitly approving the possibility that the fact-finder may conclude that the mandated findings on how sales are made in the automotive industry can be prepared without taking “additional evidence” on that or any other relevant subject. The remand is “for further consideration,” not for an entirely new trial of the on-sale defense. Furthermore, the Special Master’s earlier reliance on a later superseded legal standard to reach the ultimate conclusion of invalidity did not taint the underlying findings concerning such issues as Lacks’ motivation for its pre-critical date customer contacts, alleged experimental use or the correlation between the assembly method that Lacks was attempting to commercialize and the method covered by the Remaining Claims. The change in the law effected by Group One provides no basis for disturbing those subsidiary findings. Those findings were not implicated by the Federal Circuit’s decision in Lacks, and therefore the law of the case doctrine encompasses those findings. Therefore, the Federal Circuit’s acceptance of the District Court’s Amended Findings of Fact and Conclusions of Law is “necessarily to be inferred from the disposition on appeal,” excepting only the vacated “finding of invalidity” (because it was based on the incorrect /egal standard) and the need for supplemental findings on automotive industry sales practices. Exxon, supra. Based upon his interpretation of the Federal Circuit’s mandate, the Special Master concludes that the remaining portions of the Amended Findings of Fact and Conclusions of Law survived the 46a Federal Circuit’s decision and are part of the mandate. They therefore constitute the law of the case.’ As part of the law of the case, those remaining portions of the District Court’s earlier decision are, for a second reason, no longer subject to challenge by Lacks. In the appeal to the Federal Circuit, Lacks, by its own admission, “confined its challenge solely to the Special Master’s application of the pre-Group One standard as to what constituted a definite offer for sale” (Lacks’ Reply Brief, p.32). Unchallenged in the appeal were the findings that the assembly method that Lacks was offering to perform, and the composite wheels that it was offering to sell in its various pre-critical date promotional] efforts, coincided with the subject matter of the Remaining Claims. Unchallenged were the findings that such activities were not within the experimental use exception, and that the claimed ’ This interpretation of this particular mandate, that underlying findings regarding the on-sale issue survived the Federal Circuit’s vacating of the invalidity finding in the context of a remand for further consideration, is reinforced by the Federal Circuit's ultimate disposition of an appeal from a district court’s decision following a similar remand. In Scaltech, Inc. v. Retec/Tetra, LLC, 178 F.3d 1378 (Fed. Cir. 1999), the Court concluded that “on the record before us, the district court erred by failing to address whether an embodiment of the claimed invention was offered for sale.” Id. at 1383. The Court vacated the summary judgment of invalidity by reason of an on-sale, and remanded “for a determination as to whether the process on sale inherently satisfies each claim limitation.” Jd. at 1384. As stated in the Court's decision on a subsequent appeal, “[o]n remand, the district court sua sponte granted summary judgment on the existing record ” 269 F.3d 1321, 1326 (Fed. Cir. 2001)(emphasis added), and that decision was affirmed. The district court was not required to, and did not, make new findings on the other aspects of the on-sale transaction and events 47a invention was “ready for patenting” at the time of those activities. Lacks has therefore waived its right to challenge those underlying findings. Tronzo v. Biomet, Inc., 236 F.3d 1342, 1347-48 (Fed. Cir. 2001) (issues within the scope of the initial district court judgment and not raised on appeal are within the scope of the remand and “foreclosed from further review on remand”); U.S. v. Adesida, 129 F.3d 846, 850 (6" Cir. 1997) (“|a] party who could have sought review of an issue or a ruling during a prior appeal is deemed to have waived that decision thereafter, for ‘it would be absurd that a party who has chosen not to argue a point on a first appeal should stand better as regards the law of the case than one who had argued and lost”). D. Summary Judgment Standards Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c). To defeat summary judgment, the non-moving adverse party “may not rest upon the mere allegations or denials of the adverse party’s pleading, but the adverse party’s response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial.” Fed. R. Civ. P. 56(e). The court’s function is not to weigh the evidence or to determine the truth of the matter, but only to determine whether the evidence of record is such that a reasonable jury could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 248 49 (1986). “Where the record taken as a 48a whole could not lead a rational trier of fact to find for the non-moving party, there is no ‘genuine issue for trial.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). Under these standards, the non-moving party must do more than show there is “some metaphysical doubt” as to the material facts. Id. at 586. E. Sales Practices in the Automotive Industry The record presented by the parties’ respective motion papers includes a substantial amount of documentary and testimonial evidence generated by post-remand discovery authorized by the Special Master. At an earlier stage of the current remand proceeding, when the scope of permissible discovery was vigorously disputed by the parties, the Special Master concluded that discovery should be confined to industry sales practices and subsequent transactional history relating to Lacks’ sales promotional activities that were “already of record” (Report and Recommendation Concerning Discovery Following Remand, May 13, 2004, pp. 13-14).° The Special Master concluded at that time, consistently with his “Interestingly, the parties’ respective interpretations of the mandate at that time were reversed from those they now espouse. Defendants asserted that “the reason that the case was remanded in the first place was to re-try the on-sale issue in light of a change in the law that could not have been anticipated when the case was originally tried” (Defendants’ Joint Opposition to Plaintiff's Motion for Protective Order, p.11, emphasis added). Lacks, on the other hand, argued that “The Mandate was specific: it allowed ‘additional evidence on the practice in the industry” only and did not authorize a new trial on all aspects of Defendants’ on-sale defense” (Lack’s Memorandum in Support of Motion for Protective Order, p.6, emphasis added). 49a present interpretation of the mandate, that there was “no authority or justification for either a complete re-trial of the on-sale issue or an_ unrestricted re-opening of discovery on that issue” (/d. at p. 9). A necessary ingredient of that conclusion was the fact that those original findings remained viable as the law of the case, and did not need to be re-litigated. The augmented record provides a comprehensive overview of the procedures followed by the original equipment manufacturers (“OEMs”) such as Ford and Chrysler in acquiring vehicle components and systems from their suppliers. Verified expert reports were submitted by the following four witnesses, and such reports were tested by deposition cross-examination by the respective opposing party: e Frank S. Schwartz (on behalf of Lacks) has been employed by Lacks since 2002, currently as Director of Marketing for Advanced Technology since 2002. Before joining Lacks, his relevant experience was in sales of automobile lighting equipment to the automobile industry beginning in 1993. e Jan Ekholm (also on behalf of Lacks) has been employed by Lacks since 2002, currently as Commercial Manager for the Trim Systems division. He was employed by Chrysler from 1965 until his retirement in 2001. His relevant experience there was in various purchasing positions starting in 1985, initially as a buyer for interior and exterior plastic parts, and rising to senior commodity specialist for exterior trim and ornamentation (not including wheel parts). 50a Charles D. Ross (on behalf of Defendants), currently an independent consultant regarding purchasing operations, was employed by Ford Motor Company from 1965-2000 in a variety of mid-level and senior management positions, primarily in the field of production purchasing. Ultimately, he became executive director in charge of purchasing for body and assembly. During and shortly before the period relevant to this case, Mr. Ross was director of purchasing for all components that went into engines and transmissions, a sum of $13 billion in purchases, and he was also Ford’s purchasing representative in the reorganization of the company’s policies and procedures. Richard J. Matton (also on _ behalf of Defendants), currently provides consulting services for automotive suppliers. After serving as a buyer at Ford, he was employed by Chrysler in various purchasing-related positions from 1982-2004, including all aspects of the procurement process for the small car platform (Viper, Sebring convertible and Neon) from 1992-95 and director of chassis quality and supplier management (which included wheels and wheel trim) from 1995-2000. Other knowledgeable fact witnesses testified by deposition, including: Lee Chase, the patentee of the ‘213 Patent, was Product Development Manager at Lacks at the relevant time period, and was Director of Advanced Technology at Lacks at the time of his 2005 deposition. 5la Richard “Terry” Eifert has been employed as a Ford engineer since 1976, with all but the first year or two in tires and wheels. At the time of his 2005 deposition, he was Senior Wheel Engineer, and at the time of the relevant 1993 contacts with Lacks he was Design and Release Engineer on wheels and wheel-related hardware for the F-series trucks, responsible for coordination of design and testing of such components. He submitted a written statement (certified by him to be under penalty of perjury) in 2003, and he was_ subsequently cross-examined by Lacks concerning that statement and the documents he produced from Ford’s files. Kent Van Timmeren has been employed by Lacks since 1984, serving as a cost estimator since 1989. His duties included compiling cost estimates or quotes in response to requests from potential customers received through Lacks’ sales department. Nicholas Mendes was employed by Motor Wheel in various Sales capacities from 1968-97, serving as Sales Manager of Automotive Products from 1983-96. He had complete responsibility for the Chrysler account and was knowledgeable of Chrysler’s purchasing procedures. His written statement is in evidence, and ne _ was subsequently deposed. David Haviland was employed in various sales and marketing capacities at Motor Wheel from 1967 to 1996, the last ten years as Director of 52a Marketing for Automotive Products. His deposition transcript is in evidence. As described by Ross, the “lead time” required by North American automobile manufacturers to bring a new vehicle from its program approval stage to commencement of actual vehicle production (“Job #1” launch) during the 1990’s was 36-42 months. Parts, systems and the entire vehicle must be designed and tested for integrity, durability, safety, quality and customer acceptance before production tooling could be constructed and manufacturing process capability confirmed. Upon completion of [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_0315%3A1. Public record. Not legal advice.