Orion IP v. Hyundai Motor America (Fed. Cir. 2010)
Orion sued Hyundai and twenty other automobile manufacturers for infringement of its patent covering a “computer-assisted parts sales method.” The invention took computer and database technology available in 1988 and applied that technology to a specific solution. All of the defendants settled except Hyundai who was stuck with a $34+ million verdict jury. On appeal, the Federal Circuit reversed — holding that the asserted patent is invalid as anticipated by a promotional publication for an electronics parts catalog. Note, this post deals with the anticipation issues. I will discuss inequitable conduct in a separate post.
The asserted prior art is a brochure for the IDB2000 system that was distributed by Bell & Howell at least one year prior to the Orion priority date.* [DTX133.pdf (5979 KB)] The brochure does not specifically state that the system generates a customer proposal as required by claim 1 of Orion's patent. However, at trial, Hyundai presented evidence that the IDB2000 system was “designed to, and did” generate customer proposals. The Federal Circuit latched-onto this testimony regarding the prior art system and used it to expand the coverage of the prior art brochure — holding that the “testimonial and documentary evidence regarding the Electronic Parts Catalog reference establish that the Electronic Parts Catalog reference anticipates claim 1 of the ’627 patent.”
I have genuine problems with the analysis in this opinion. The appellate panel expanded the scope of the asserted anticipatory prior art reference by relying on testimonial evidence of how the associated system was used at the time. There are two separate problems. First, the scope of a "printed publication" should be examined for what it disclosed to one of skill in the art rather rather than to how underlying prior art systems were used at the time. Contemporaneous use would be important for an analysis of whether the invention was "in public use" more than one year before the filing date. However, this decision’s doctrinal focus is solely on anticipation by the prior art brochure as a printed publication. If the IDB2000 system itself anticipated the patent then the defendants should have presented evidence under the public use prong of 102(b). The second problem with the court’s decision is that the oral testimony relied on here opens the door to potentially self-serving testimony that is not ordinarily allowed in invalidity/priority proceedings because it does not satisfy the clear and convincing standard.
* The asserted prior art reference was apparently printed after the Orion filing date. However, Hyundai presented oral testimony that a very similar brochure had been distributed earlier.