The panel ruled Thursday in Definitive Holdings v. Powerteq, Case No. 24-1761, in a decision authored by Circuit Judge Cunningham and joined by Chief Judge Moore and Judge Dyk.
At issue was U.S. Patent No. 8,458,689, which covers methods and apparatuses for upgrading engine controller software by connecting a device that replaces portions of stock engine control software with new data blocks. Definitive Holdings sued Powerteq for infringement.
Powerteq argued that a third-party company, Hypertech Inc., had sold a device called the "Hypertech Power Programmer III," or PP3, that embodied all limitations of the asserted claims by at least 1996. The patent's priority date was March 30, 2001, making March 30, 2000 the critical date for the on-sale bar under pre-AIA 35 U.S.C. § 102(b).
The district court granted summary judgment of invalidity. On appeal, the Federal Circuit held that the lower court properly relied on evidence establishing the PP3 was sold before the critical date, and rejected Definitive's challenges to the underlying records.
The panel found that testimony from a witness identified as Mr. Ramsey, given within his personal knowledge, adequately established his ability to authenticate the PP3 sales records, which themselves demonstrated the device was on sale prior to the critical date.
On the central legal question, the Federal Circuit rejected Definitive's argument that prior art under the on-sale bar must publicly disclose how to perform the patented method. The court held that disclosure is not required under the prior sale doctrine, and that the inquiry focuses on whether the sale relates to a device that embodies the invention.
The panel also addressed an evidentiary dispute over source code analysis by Powerteq's expert, Dr. Brogioli. The Federal Circuit held that source code commands themselves are not hearsay because the code is not a statement.