U.S. Patent No. 5,367,627 is drawn to a computerized method for selecting parts, for example in an auto shop for selecting parts for repairs. Orion IP, LLC v. Hyundai Motor Co., No. 2009-1130 (Fed. Cir. 5/17/2010). The patentee alleged that Hyundai and other plaintiffs infringed the claimed method in their online sales systems. A jury found for Orion and awarded damages. The district court denied Hyundai’s motion for JMOL. Hyundai argued that the ‘627 patent was anticipated by prior art electronic parts catalogs. Orion responded that the asserted prior art did not meet all the limitations of the claims at issue, so it was not anticipatory.
The Federal Circuit panel (Gajarsa, Plager, and Linn, opinion by Gajarsa) reviewed the denial of JMOL. The panel first held that Hyundai had not waived its right to move for JMOL. The panel next agreed with Hyundai that the prior art online electronic parts catalog qualified as a prior art printed publication (slip op. at 9). The issue then was whether the prior art parts catalog met the “proposal” element of the claim at issue, which was the only claim element in dispute. The panel concluded that this element was met by the prior art reference, so the claim was anticipated. Slip op. at 13. Several dependent claims in dispute were also held to be anticipated. The district court was reversed, and no new trial is warranted. The panel also held that there was no inequitable conduct.