Cellulose Material Solutions, LLC v. SC Marketing Group, Inc.

Background

Cellulose Material Solutions claimed that SC Marketing Group, Inc., also known as Thermal Shipping Solutions, infringed U.S. Patent No. 11,078,007, the ’007 patent. The patent concerns packaging insulation designed to keep package contents, including meal-kit food items, cool and fresh without refrigerant packs. Cellulose’s product was called InfinityCore, and Thermal Shipping’s product was called Renewliner.

Thermal Shipping moved for summary judgment on patent-invalidity grounds. It argued that a June 19, 2015 email from Cellulose employee Christopher Benner to Thermal Shipping’s owner, president, and chief executive officer, Salvatore Cardinale, was a commercial offer to sell the claimed invention before the patent’s June 27, 2016 filing date. Thermal Shipping also argued that sales of the Renewliner beginning in February 2016 constituted anticipating prior art under 35 U.S.C. § 102.

The June 2015 email and the on-sale bar

The court explained that the on-sale bar can invalidate a patent when the claimed invention was the subject of a commercial offer for sale and was ready for patenting before the effective filing date. The party challenging validity must prove the requirements by clear and convincing evidence.

The court held that the June 19, 2015 email was not a commercial offer for sale. Although the email discussed pricing and described a new insulating material, it invited further discussion and provided only a per-unit price quotation. It did not contain terms sufficiently definite for Thermal Shipping to create a binding contract through simple acceptance. The court characterized the email as preparation for a sale rather than a definite offer.

The court rejected Thermal Shipping’s argument that Henderson’s deposition testimony describing the email as an “offer” was dispositive, explaining that the court had to evaluate the email’s actual language and terms. The court also rejected Thermal Shipping’s alternative argument that the email nevertheless made the invention otherwise publicly available, reasoning that this would undermine the requirement that the sales communication qualify as an offer.

The court therefore denied the summary-judgment motion on the on-sale-bar ground.

The Renewliner sales and anticipation

The court next considered whether the Renewliner sales made the product anticipating prior art. A patent claim is anticipated only if a single prior-art reference discloses every claim element, expressly or inherently, in the claimed arrangement. Anticipation is a factual question that may be resolved on summary judgment when no genuine dispute of material fact exists.

The court found that Thermal Shipping met its initial burden with evidence that the February 2016 Renewliner sale could be anticipating prior art because Cellulose alleged that the Renewliner satisfied all claims of the ’007 patent. But a disclosure received from the inventor within one year before the patent filing date does not invalidate the patent under the statutory exception in 35 U.S.C. § 102(b)(1)(A). Cellulose presented evidence that the initial Renewliner product was received from the ’007 patent’s named inventors, including a February 23, 2016 purchase order for Cellulose to ship the product directly to Thermal Shipping’s customer Dinner Thyme.

Thermal Shipping relied on a separate April 2016 Renewliner sale fulfilled by vendor Turner Fiberfill rather than Cellulose. It argued that Cellulose had not shown that the Turner product originated with Cellulose. Cellulose responded that Thermal Shipping and Turner did not complete their manufacturing agreement until July 2016 and that Turner did not ship Renewliner products until after that time. Cellulose also argued that the February 2016 disclosure preceded the April 2016 disclosure and therefore could affect whether the later disclosure was excluded from prior-art treatment under § 102(b)(1)(B). Thermal Shipping replied that the February and April products differed in their manufacturing processes.

The court identified as potentially dispositive whether the April 2016 purchase order itself sufficiently disclosed the invention and whether it was excluded from prior-art treatment because it was the same as, or related to, the February 2016 purchase order. The court concluded that further briefing would assist its analysis.

Disposition

The court denied Thermal Shipping’s summary-judgment motion on the June 2015 email’s alleged on-sale bar. It did not issue a final ruling in the quoted text on the Renewliner anticipation ground; instead, it ordered one additional brief from each party, limited to ten pages, with both briefs due March 7, 2024. The order states that it resolves ECF No. 141.