Writing for a panel that included Chief Judge Moore and Circuit Judge Dyk, Circuit Judge Cunningham upheld the District of Utah's ruling that Hypertech Inc.'s "Power Programmer III," or PP3, embodied every limitation of the asserted claims of U.S. Patent No. 8,458,689. The patent, which covers methods and apparatuses for "upgrading software in an engine controller," has a priority date of March 30, 2001, with a critical date of March 30, 2000.
District Judge David Barlow granted Powerteq LLC's motion for summary judgment of invalidity under 35 U.S.C. § 102(b) after finding that Hypertech sold the PP3 in the United States beginning in 1994. Definitive did not dispute Powerteq's statement of undisputed material facts, instead arguing that the underlying evidence — deposition testimony from Hypertech CEO Ramsey and the PP3's source code — was inadmissible.
The panel declined to resolve the broader Tenth Circuit question of whether Rule 30(b)(6) testimony beyond a witness's personal knowledge is usable at summary judgment. Instead, it held that Ramsey's testimony "within his personal knowledge adequately establishes" both the authentication of the PP3 sales records and that Powerteq's expert, Dr. Brogioli, analyzed source code from the PP3. "The foundational requirement for personal knowledge 'is not difficult to meet,'" the court wrote, quoting United States v. Duran.
On the source code, the panel held that the code commands themselves are not hearsay. "An order or instruction is, by its nature, neither true nor false and thus cannot be offered for its truth," the court wrote, quoting United States v. Shepherd. "So too for source code." The panel said its prior decision in Wi-Lan Inc. v. Sharp Electronics Corp. addressed only the trustworthiness of unauthenticated paper printouts and did not hold that authenticated source-code commands are hearsay.
On the central legal question, the court rejected Definitive's contention that pre-AIA § 102(b) requires the prior sale to disclose to the public how to perform the patented method. Citing the Supreme Court's decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the panel reiterated that triggering the on-sale bar does not "require that the sale make the details of the invention available to the public." Quoting J.A. LaPorte, Inc. v. Norfolk Dredging Co., the court added that "the question is not whether the sale, even a third party sale, 'discloses' the invention at the time of sale, but whether the sale relates to a device that embodies the invention."
The panel distinguished cases involving secret manufacturing processes, such as W.L. Gore & Associates, Inc. v. Garlock, Inc., in which only the resulting product was sold and the process was not discoverable from it. "Hypertech was directly selling to the public the ability to perform the claimed method and to use the claimed apparatus," the court wrote, citing the PP3 installation guide's instructions for reprogramming "a 1996 or newer vehicle sold in the United States."
The panel also noted Definitive's litigation posture. "Definitive chose not to dispute the facts and instead relied on evidentiary challenges," Cunningham wrote. "Having lost those evidentiary challenges, it cannot now establish that a genuine dispute of material fact precludes summary judgment."
Definitive was represented by Charles L. Roberts of Wasatch-IP. Powerteq was represented by Julie S. Goldemberg of Morgan, Lewis & Bockius LLP, with Nolan M. Goldberg, Shiloh Rainwater, Baldassare Vinti, Todd Joseph Ohlms and John E. Roberts of Proskauer Rose.