Federal Circuit IP
Definitive Holdings, LLC v. Powerteq LLC
Definitive Holdings, LLC v. Powerteq LLC
CAFC No. 2024-1761, Decided April 14, 2026
(Moore, Dyk, Cunningham)
Background:
- D. Utah: Definitive sued Powerteq for infringing the ’689 patent (priority date: March 30, 2001). The asserted claims cover a method for upgrading software in an engine controller and an apparatus for upgrading software in an engine controller.
- Powerteq moved for summary judgment of invalidity under pre-AIA § 102(b), arguing that non-party Hypertech’s Power Programmer III (“PP3”) was sold in the United States before the critical date and embodied all asserted claim limitations.
- The PP3 was sold at least as early as 1996. Its installation guide explained how a user could reprogram a 1996 or newer vehicle sold in the United States using the device.
- Definitive challenged Powerteq’s evidence, including Hypertech’s Rule 30(b)(6) testimony, PP3 source code, and expert testimony. Definitive argued that Hypertech’s witness lacked personal knowledge and that the source code was hearsay.
- The district court granted summary judgment of invalidity under § 102(b). Definitive appealed, arguing that the district court relied on inadmissible evidence and that the on-sale bar should not apply unless the prior sale publicly disclosed the product’s internal functionality.
Issue: Whether a third-party sale of a product that embodies the asserted patent claims triggers the pre-AIA § 102(b) on-sale bar even if the sale did not publicly disclose the product’s internal functionality.
Holding: Affirmed. The third-party sale of the PP3 triggered the pre-AIA § 102(b) on-sale bar because the PP3 was sold before the critical date and embodied the asserted claims. The on-sale bar does not require that the sale publicly disclose every detail of the invention.
Federal Circuit Analysis:
- Evidence: The Federal Circuit rejected Definitive’s evidentiary challenges. Ramsey’s Rule 30(b)(6) testimony was admissible because he reviewed Hypertech’s sales records, understood its record-keeping practices, and could authenticate the records. The PP3 source code was not hearsay because source-code commands are operative instructions, not assertions.
- On-sale bar: The Federal Circuit rejected Definitive’s argument that the sale must publicly disclose how the invention works. The key question is whether the sold product embodied the claimed invention, not whether every internal detail was public.
- The PP3 itself allowed users to perform the claimed engine-controller reprogramming method. Because the public was already using the patented functionality, enforcing the patent would improperly remove existing technology from the public domain.
Takeaways:
- Patent owner:
- For pre-AIA patents, a third-party sale can trigger § 102(b) even if the internal operation of the sold product was not publicly disclosed.
- Patent challenger:
- One of the ways to put a method on sale: offering/selling a product substantially embodying essential features of the method.
- Internal functionality does not necessarily need to be publicly disclosed if the sold product itself embodies the claimed invention.
- Corporate testimony, sales records, product manuals, source code, and expert analysis can work together to establish invalidity at summary judgment.
- Rule 30(b)(6) testimony may still be useful even when the witness lacks firsthand historical involvement, especially where the witness can authenticate records or testify from personal review.