Orion IP, LLC v. Hyundai Motor America (2010) [605 F.3d 967]
This case was held in the United States Court of Appeals, Federal Circuit. In this case, Orion sued Hyundai alleging that their online sales system (hyundaiusa.com and hyundaidealer.com) infringed two of Orion's patents (referred to as patents '627 and '342). The '627 patent contained a method for assisting a salesperson in selecting appropriate parts corresponding to a customer's particularized need using a computerized system in place of paper catalogs and order forms. Essentially, the system's user would enter the type of part desired, the system would identify all parts that would meet the user's particular needs, then compile all the parts into a proposal that would include, among other things, the price of the parts and images of the parts. Among other claims, Hyundai claimed that the '627 patent was invalid because a different database system which contained the same steps and procedures as the '627 patent. This system was known as the IDB2000. Previously, the district court had ruled that the critical date of the '627 patent was November 10 1988. The Court of Appeals upheld this date as the critical date. The Court was able to determine that the IDB2000 was developed and sold by the company Bell & Howell to Reynolds & Reynolds in 1987. Reynolds & Reynolds then began to demonstrate and sell the system to car dealerships through a promotional publication entitled "Electronic Parts Catalog". The Court sought to determine if this catalog satisfied the requirements of section 102 (b). Specifically, the court wanted to determine if the invention was in a printed publication more than a year before the critical date and whether or not the publication was made accessible to persons interested and ordinarily skilled in the subject matter to which the advertisement relates. Through testimony it was shown that the catalog was copyrighted in 1987 and that the catalog was used as a mail piece to car dealerships and by salesmen to demonstrate the machine to potential buyers. Additionally, the court had to determine if the catalog properly disclosed the invention such that one of ordinary skill in the art could make the invention without further undue experimentation. It was determined that the catalog, which contained an example of the process used by the salesmen, sufficiently demonstrated the process used. Therefore, in light of all this, the court found the prior art publication anticipated the disputed claims of the patent and therefore invalid.