The US Court of Appeals for the Federal Circuit affirmed summary judgment of invalidity under the pre-America Invents Act (AIA) on sale bar, holding that a third party sale to the public of a product embodying a patented method and apparatus can trigger invalidity even where details of the invention were not expressly disclosed. Definitive Holdings v. Powerteq, Case No. 24-1761 (Fed. Cir. Apr. 14, 2026) (Moore, Dyk, Cunningham, JJ.)
Definitive Holdings sued Powerteq alleging infringement of a patent directed to methods and systems for reprogramming engine controllers. With a priority date of March 30, 2001, the patent was subject to pre-AIA law. Powerteq moved for summary judgment of invalidity under pre-AIA 35 U.S.C. § 102(b), arguing that a nonparty, Hypertech, had sold a product (the PP3) that embodied all limitations of the asserted claims more than one year before the patent’s priority date.
Rather than disputing the underlying facts, Definitive challenged the admissibility of the evidence on which Powerteq relied. Definitive argued that the deposition testimony of Hypertech’s Rule 30(b)(6) witness, the PP3 source code, and expert testimony relying on that source code were inadmissible. The district court rejected those arguments and granted summary judgment of invalidity, concluding that the third party sales triggered the on sale bar. Definitive appealed.
The Federal Circuit reviewed the summary judgment ruling de novo, applying Tenth Circuit law.
Definitive first argued that the district court improperly relied on testimony from Hypertech’s Rule 30(b)(6) witness, Hypertech CEO and owner Jay Ramsay. The Federal Circuit disagreed, finding that Ramsay’s testimony was based on his personal knowledge and thus was sufficient to authenticate Hypertech’s sales records and establish that Powerteq’s expert analyzed source code from the PP3 product.
The Court explained that a reasonable juror could conclude that Ramsay had personal knowledge of Hypertech’s recordkeeping practices and sales activities. Because those portions of the testimony were sufficient to support summary judgment, the Court declined to address whether other portions of the 30(b)(6) testimony were properly considered and how the Tenth Circuit generally treats Rule 30(b)(6) testimony at summary judgment.
Definitive next argued that the PP3 source code and related expert testimony constituted inadmissible hearsay. The Federal Circuit disagreed. The Court explained that while comments or annotations in source code could, in some circumstances, qualify as hearsay statements, the operative source code itself functions as a set of commands or instructions. As such, it is not offered for the truth of any assertion. The Court therefore found that the district court did not abuse its discretion in considering expert testimony describing the functioning of the source code when granting summary judgment.
Finally, Definitive contended that the on sale bar did not apply because Hypertech’s sales of the PP3 did not publicly disclose how to perform the patented method, even if the PP3 embodied all claim limitations and was sold more than one year before the priority date.
The Federal Circuit rejected Definitive’s argument, emphasizing that Hypertech’s sales directly conveyed to the public the ability to practice the claimed method and use the claimed apparatus. The Court explained that where members of the public are already using the patented features through a commercially sold product, allowing later patent exclusivity would improperly withdraw existing technology from the public domain. Accordingly, the Court found that the third party sales triggered the pre-AIA on sale bar, and affirmed summary judgment of invalidity.
Practice Note: Under pre-AIA law, third party sales can invalidate a patent where the public is given the ability to practice the claimed invention, even if the invention’s details are not expressly disclosed.
