Godshall: 3-23-2011 HW

Orion IP v. Hyundai Motor America

(May 17, 2010)

This case centered on a computer–assisted method to help a salesman identify automotive parts for a customer. Hyundai was sued for infringement by Orion, who owned a patent for a similar a computer–assisted method to help a salesman identify automotive parts for a customer, which Orion won. Hyundai then appealed to a Federal Appeals Court, whose decision is described here.

Hyundai initially argued the Orion’s patent was invalid as it was anticipated by prior art by a previously patented electronic parts catalog, the IDB2000, which functioned in a similar manner. Orion countered by arguing that it's system did not generate a customer proposal, which was outlined in one of its claims of the IDB2000’s patent. Orion claims this was done so that the customer would not be able to calculate the difference in the wholesale and retail price of the automotive component. The district court sided with Orion in this claim.

The Federal Court began their analysis by taking up the issue of whether or not the catalog was disseminated. A representative from Reynolds & Reynolds, the owner of the IDB2000 patent, testified that the IDB2000 had described in a brochure sent to several hundred automotive-components salesmen. Hyundai also called a witness from Reynolds & Reynolds to testify and explain the similarities between the IDB2000 and Orion’s patent. Orion argued that because its patent did not reveal the cost to the customer, and the lack of a proposal differentiated it from the IDB2000.

The judge held that an electronic parts catalog qualified as prior art printed publication, and thus upheld most of the district court’s earlier decision, rendering Orion’s patent invalid. However, on the issue of whether Orion’s patent was sufficiently different from the IDB2000, the court sided with Orion.