Baker Driveaway Co., Inc. v. Bankhead Enterprises

• Decision Date: 02 November 1979
• Docket Number: Civ. A. No. 79-71457.
• Citation: 478 F. Supp. 857
• Parties: BAKER DRIVEAWAY COMPANY, INC., a Michigan Corporation; and William O. Bridge, an Individual, Plaintiffs, v. BANKHEAD ENTERPRISES, INC., a Georgia Corporation; and Leaseway Transportation Corp., a Delaware Corporation, Defendants.
• Court: U.S. District Court — Western District of Michigan

478 F. Supp. 857

BAKER DRIVEAWAY COMPANY, INC., a Michigan Corporation; and William O. Bridge, an Individual, Plaintiffs, v. BANKHEAD ENTERPRISES, INC., a Georgia Corporation; and Leaseway Transportation Corp., a Delaware Corporation, Defendants.

Civ. A. No. 79-71457.

United States District Court, E. D. Michigan, S. D.

November 2, 1979.

Lloyd M. Forster, Troy, Mich., for plaintiffs.

Robert A. Marsac, Dykhouse & Wise, Detroit, Mich., for defendants.

MEMORANDUM OPINION AND ORDER

JOINER, District Judge.

This case involves a new development in the design of trailers used to transport new motor vehicles (automobiles, vans, and small trucks) from the assembly plants to the dealers throughout the country. Plaintiffs claim to have invented a new way of making such trailers more valuable by making it possible for the same trailer to carry ten cars on one trip and then, with only slight adjustments, carry five vans, seven pickup trucks, or some combination of vans, pickups and cars the next trip. Plaintiffs further claim that the defendants have improperly converted to their own use information that was not theirs to use and in so doing have copied and continue to copy the plaintiffs' designs.

Plaintiffs have filed an application for a patent for their design and that application is now pending with the Patent Office.

The case before the court is in two counts: count one charges the defendants with breaching a confidential relationship by misappropriating trade secrets while count two charges the defendants with "malicious interference with prospective advantageous commercial relationships." The defendants have moved this court to dismiss count two for failing to state a claim and for being premature considering the ongoing patent office proceedings.

While it may be that plaintiffs will have a cause of action in the future under the facts pled here, this court believes that any such action is premature and should be dismissed from this case.

The basis of plaintiffs' count two claim is that the defendants have taken certain actions in connection with the plaintiffs' pending patent application which have had the effect of delaying what plaintiffs assert is the inevitable issuance of the patent. In the words of the plaintiffs' complaint, the allegations are that:

37. Bankhead has resorted to a series of successive maneuvers in the Patent Office starting with the filing of a Protest alleging that Bankhead trailers were "on sale" more than one year before Bridge's filing date.

38. The trailers alleged to be "on sale" in Bankhead's Protest were the same H-1 and B-10 trailers that incorporated plaintiffs' trade secrets and were disclosed and offered for sale to Anchor by Bankhead in violation of Bankhead's confidential relationship with plaintiffs.

39. Bridge responded to such Protest in the Patent Office and on November 20, 1978 the Examiner entered an Office Action holding that Bankhead's protest did not present sufficient evidence to warrant a rejection.

40. Bankhead nevertheless persisted in interfering with and delaying the issuance of Bridge's patent by filing on December 28, 1978 additional allegations of prior public use and sale of other manufacturers' car haulers none of which, even if the allegations were true, anticipated any of Bridge's allowed claims.

41. Belatedly, on March 9, 1979 Bankhead resorted to further delaying tactics by filing a Petition for the Institution of Public Use Proceedings in the Patent Office thereby threatening to delay for years the final issuance of Bridge's patent.

Plaintiffs allege that defendants know that plaintiffs have a valid claim to a patent and that defendants have only taken the actions complained of in order to delay the issuance, and with it the effect, of the patent. According to plaintiffs, defendants will save a large amount of money that plaintiffs claim should be paid to plaintiffs as royalties for the use of plaintiffs' ideas since royalties cannot be owed for any time prior to the actual issuance of the patent.

At the outset, the court would like to emphasize the fact that the actions complained of in count two involve exclusively the efforts of the defendants to convince a governmental agency to exercise its power in certain ways. Our system of government places a high value on the freedom of the public to petition the government, and such activity will not be curtailed without some extraordinary showing of abuse. California Motor Transport Co. v. Trucking Unlimited, 404 U.S. 508, 92 S.Ct. 609, 30 L.Ed.2d 642 (1972); Eastern Railroad Conference v. Noerr Motor Freight, 365 U.S. 127, 81 S.Ct. 523, 5 L.Ed.2d 464 (1961); United Mine Workers v. Pennington, 381 U.S. 657, 85 S.Ct. 1585, 14 L.Ed.2d 626 (1965).

In their motion to dismiss count two, ...