The court affirmed U.S. District Judge David Barlow's ruling that Definitive Holdings' U.S. Patent No. 8,458,689 was invalid because Hypertech Inc. had commercially sold a device called the Hypertech Power Programmer III that embodied all asserted claim limitations by at least 1996 — more than a year before the patent's critical date of March 30, 2000.
The patent covers methods and devices for reprogramming engine controllers by connecting a device that can replace portions of stock engine control software with new data blocks while retaining an image of the original software. Definitive Holdings had alleged that Powerteq infringed the patent, which has a priority date of March 30, 2001.
On appeal, Definitive argued that the on-sale bar should not apply to third-party sales that do not publicly disclose the invention's functionality. The company contended that purchasers of the PP3 could not discern from the sales how to perform the patented method.
Circuit Judge Cunningham, writing for the panel, rejected that theory. The court held that "triggering the on-sale bar does not require that the sale make the details of the invention available to the public," quoting the Supreme Court's 2019 decision in Helsinn Healthcare.
The panel distinguished secret manufacturing processes from direct product sales: "Hypertech was directly selling to the public the ability to perform the claimed method and to use the claimed apparatus. In these circumstances, the public was directly making use of the patented features and permitting a patentee to remove them from the public domain would withdraw from the public domain technology already available to the public."
The Federal Circuit largely sidestepped Definitive's evidentiary challenges, finding that Hypertech CEO Mark Ramsey's testimony within his personal knowledge was sufficient to establish that the PP3 was on sale before the critical date. The court noted that Powerteq's expert had also analyzed source code from the PP3 to confirm it embodied the asserted claims.