A Federal Circuit panel raised concerns on Friday about Ioengine LLC’s effort to overturn a Delaware federal jury’s decision invalidating its patents based on prior public use. The jury had found that Ioengine’s patents were anticipated by its own product, which had been on sale for more than a year before the company filed for patent protection.
Ioengine’s appeal hinges on whether its firmware upgrade, which was made available for the M-Systems Ltd. DiskOnKey, was truly used by customers or if it was merely offered but never utilized. The company contends that while the upgrade was available on M-Systems’ website and promoted by M-Systems, there is no evidence that anyone actually downloaded or used the firmware.
Judge Timothy Dyk pressed Ioengine’s counsel, Noah Leibowitz of Dechert LLP, asking why it wouldn’t be reasonable for the jury to infer that some of the hundreds of people who purchased the DiskOnKey thumb drive would have downloaded and used the upgrader, given that it was encouraged by Ioengine. Leibowitz responded that there was no direct evidence—such as download logs—indicating that the upgrader was used.
