Definitive Holdings v. Powerteq

United States Court of Appeals
for the Federal Circuit
______________________
DEFINITIVE HOLDINGS,
Plaintiff-Appellant
v.
POWERTEQ,
Defendant-Appellee
______________________
2024-1761
______________________
Appeal from the United States District Court for the
District of Utah in No. 2:18-cv-00844-DBB, Judge David
Barlow.
______________________
Decided: April 14, 2026
______________________
CHARLES L. ROBERTS, Wasatch-IP, Salt Lake City, UT,
argued for plaintiff-appellant.
JULIE S. GOLDEMBERG, Morgan, Lewis & Bockius LLP,
Philadelphia, PA, argued for defendant-appellee. Also rep-
resented by NOLAN M. GOLDBERG, SHILOH RAINWATER,
BALDASSARE VINTI, Proskauer Rose, New York, NY; TODD
JOSEPH OHLMS, Chicago, IL; JOHN E. ROBERTS, Boston,
MA.
______________________
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DEFINITIVE HOLDINGS v. POWERTEQ 2
Before MOORE, Chief Judge, DYK and CUNNINGHAM,
Circuit Judges.
CUNNINGHAM, Circuit Judge.
Definitive Holdings, LLC (“Definitive”) sued Powerteq
LLC (“Powerteq”) for infringement of patent claims relat-
ing to reprogramming engine controllers. The United
States District Court for the District of Utah granted
Powerteq’s motion for summary judgment of invalidity un-
der the pre-America Invents Act (“AIA”) version of
35 U.S.C. § 102(b). Definitive Holdings, LLC v. Powerteq
LLC, 731 F. Supp. 3d 1243, 1251–62 (D. Utah 2024) (“De-
cision”). Definitive appeals, contending that the district
court erroneously relied on inadmissible hearsay and that
the 35 U.S.C. § 102(b) on-sale bar should be limited to sales
expressly disclosing the prior art device’s functionality. We
affirm.
I. BACKGROUND
Definitive sued Powerteq in the District of Utah, alleg-
ing infringement of claims 1, 12, 21, 23, 27, 28, 31, and 32
of U.S. Patent No. 8,458,689 (the “’689 patent”). Decision
at 1249–50. The ’689 patent has a priority date of
March 30, 2001.1 It claims methods and apparatuses for
“upgrading software in an engine controller,” by connecting
a device to an engine controller, where the device can re-
place portions of the stock engine control software with
new data blocks while retaining an image of the stock en-
gine control software. See, e.g., ’689 patent claims 1, 27.
1 “Sales made more than one year before the patent’s
priority date implicate the on-sale bar of 35 U.S.C.
§ 102(b).” Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1340
(Fed. Cir. 2007). For the ’689 patent, this “critical date,”
id., is March 30, 2000.
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DEFINITIVE HOLDINGS v. POWERTEQ 3
Powerteq moved for summary judgment of invalidity
under pre-AIA 35 U.S.C. §§ 101, 102(b), and 112, as well as
for summary judgment of non-infringement. Decision
at 1250–51 & n.22. With respect to 35 U.S.C. § 102(b),
Powerteq argued that, by at least 1996, non-party Hyper-
tech Inc. (“Hypertech”) sold a device named the “Hypertech
Power Programmer III” (the “PP3”) that embodied all lim-
itations of the asserted claims of the ’689 patent. See Deci-
sion at 1252, 1257–58; J.A. 7038–39 (Ramsey Dep. 18:16 to
19:21). Definitive “d[id] not dispute any of Powerteq’s al-
leged undisputed facts,” but instead contended that “the
facts upon which the motion [was] based” relied on “inad-
missible evidence.” J.A. 6657–58. Definitive specifically
objected to the admissibility of: (1) the deposition testi-
mony of Hypertech’s 30(b)(6) witness, CEO and owner
Mr. Ramsey, that “Hypertech was based in the United
States and that it sold PP3 units in the United States be-
ginning in 1994,” Decision at 1253–54; and (2) the source
code of the PP3, as well as an expert declaration from
Dr. Brogioli relying on that source code, Decision
at 1254–55.
Definitive argued that Mr. Ramsey’s deposition testi-
mony would be inadmissible at trial because it violated
Federal Rule of Evidence 602’s requirement that a “witness
may testify to a matter only if evidence is introduced suffi-
cient to support a finding that the witness has personal
knowledge of the matter.” Decision at 1253 (quoting
Fed. R. Evid. 602). The district court determined that
Mr. Ramsey’s deposition testimony was admissible at sum-
mary judgment notwithstanding any lack of personal
knowledge, holding that Federal Rule of Civil Procedure
30(b)(6) permits corporate representatives to testify out-
side of their personal knowledge. Decision at 1253–54. Ac-
cordingly, the district court ruled that “it is immaterial
that Mr. Ramsey joined Hypertech years after the company
stopped selling the [PP3] or that no engineers who worked
on the device still work for Hypertech today” and
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DEFINITIVE HOLDINGS v. POWERTEQ 4
considered Mr. Ramsey’s deposition testimony in its sum-
mary judgment analysis. Decision at 1254; see, e.g., Deci-
sion at 1257 (“Mr. Ramsey testified as to sales of the PP3
made in the United States between 1994 and 2001 . . . .”).
Definitive further contended that the source code of the
PP3 was inadmissible hearsay and that no exception ap-
plied. Decision at 1254. The district court determined that
“code that merely describes computer commands” is not
hearsay because “the code is not a statement,” even though
“descriptions within the code . . . would fall within the def-
inition of hearsay.” Decision at 1255. The district court
further concluded that both “the code and the descriptions
within the code” could be presented in an admissible form
at trial because they were business records under Federal
Rule of Evidence 803(6) and because “another employee at
Hypertech who was charged with maintaining records”
would be able to authenticate the source code. Decision
at 1255. In deciding summary judgment, the district court
thus considered the PP3’s source code as well as Powerteq’s
expert’s declaration analyzing the source code. See, e.g.,
Decision at 1259 (“[D]r. Brogioli declared that the PP3 con-
tained code that enabled it to save and restore the original
software.”).
Definitive also contended that the PP3 was not antici-
patory prior art. Decision at 1255–62. Definitive argued
that Hypertech abandoned its use of the PP3 and that the
sale of the PP3 did not render the asserted claims of the
’689 patent invalid because Powerteq offered no evidence
that the PP3 disclosed all limitations of the asserted claims
by disclosing the inner workings of the device to the public.
Decision at 1255–57. The district court rejected these ar-
guments, holding: (1) that “[n]otwithstanding abandon-
ment of the prior use—which may preclude a challenge
under section 102(g)— . . . third party prior use accessible
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DEFINITIVE HOLDINGS v. POWERTEQ 5
to the public is a section 102(b) bar,”2 Decision at 1256
(first alteration in original) (quoting Eolas Techs. Inc.
v. Microsoft Corp., 399 F.3d 1325, 1333 (Fed. Cir. 2005));
and (2) that “disclosure is not required under the prior sale
doctrine,” Decision at 1257. Accordingly, the district court
held that there was “no genuine dispute of material fact
that the [PP3] was the subject of a commercial offer for sale
more than one year before the critical date,” Decision
at 1257, and that there was no genuine dispute of material
fact that the PP3 fully embodied each of the asserted
claims, see Decision at 1258–62.
The district court granted Powerteq’s motion for sum-
mary judgment of invalidity under 35 U.S.C. § 102(b) and
did not reach Powerteq’s other arguments. Decision
at 1262. Definitive timely appealed. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1).
II. STANDARD OF REVIEW
We review the grant of summary judgment under the
law of the regional circuit, here, the Tenth Circuit. Mi-
croStrategy Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1349
(Fed. Cir. 2005). Under the law of the Tenth Circuit, “[w]e
review a district court’s decision granting summary judg-
ment de novo, resolving all factual disputes and drawing
all reasonable inferences in favor of the non-moving party.”
Argo v. Blue Cross & Blue Shield of Kan., Inc., 452 F.3d
1193, 1199 (10th Cir. 2006). At summary judgment, “the
content or substance of the evidence must be admissible.”
Id. (quoting Thomas v. Int’l Bus. Machs., 48 F.3d 478, 485
(10th Cir. 1995)). But evidence “need not be submitted ‘in
a form that would be admissible at trial.’” Id. (quoting Ce-
lotex Corp. v. Catrett, 477 U.S. 317, 324 (1986)). The Tenth
2 Definitive has not raised this issue of abandonment
on appeal. See generally Appellant’s Br.
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DEFINITIVE HOLDINGS v. POWERTEQ 6
Circuit “review[s] a district court’s evidentiary rulings at
the summary judgment stage for abuse of discretion.” Id.
III. DISCUSSION
Definitive contends that the district court erred
by: (1) relying on Mr. Ramsey’s 30(b)(6) deposition testi-
mony at the summary judgment stage, despite his pur-
ported lack of personal knowledge, Appellant’s Br. 16–31;
(2) relying on the PP3 source code, which it contends is in-
admissible hearsay, Appellant’s Br. 32–42; (3) failing to
sufficiently address the heightened burden of clear and
convincing evidence required to invalidate patent claims,
Appellant’s Br. 42–45; and (4) holding that 35 U.S.C.
§ 102(b) applies to third-party sales when the limitations
of the asserted patent claims are not publicly disclosed, Ap-
pellant’s Br. 45–58. We address each argument in turn.
A.
We first address Definitive’s arguments regarding
Mr. Ramsey’s deposition testimony. Definitive argues that
the district court erred by considering Mr. Ramsey’s
30(b)(6) deposition testimony at summary judgment be-
cause the substance of that testimony would not have been
admissible at trial. Appellant’s Br. 12–31. Definitive con-
tends that the district court relied on Mr. Ramsey’s 30(b)(6)
deposition testimony for two key determinations: (1) that
the PP3 “was on sale before the critical date of the ’689 pa-
tent,” and (2) “that it ran on the code that Powerteq’s ex-
pert analyzed.” Appellant’s Br. 12. Definitive contends
that Mr. Ramsey’s testimony as to these determinations
was inadmissible because it was not based on personal
knowledge, violating Federal Rule of Evidence 602.3
3 Definitive has not raised any argument that
Mr. Ramsey’s testimony would be inadmissible hearsay
under Federal Rule of Evidence 802. See Appellant’s
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DEFINITIVE HOLDINGS v. POWERTEQ 7
Appellant’s Br. 16–31. In particular, Definitive argues
that the Tenth Circuit would adopt the rule that while Fed-
eral Rule of Civil Procedure 30(b)(6) permits corporate rep-
resentatives to be deposed about matters outside of their
personal knowledge, Federal Rule of Civil Procedure
32(a)(1)(B) prohibits the use of that testimony at summary
judgment, because the testimony would be inadmissible at
trial under Federal Rule of Evidence 602. Appellant’s
Br. 17–29.
We do not resolve Definitive’s argument that the Tenth
Circuit would adopt that evidentiary rule because we hold
that Mr. Ramsey’s testimony within his personal
knowledge adequately establishes (1) his ability to authen-
ticate the PP3 sales records, which themselves demon-
strate that the PP3 was on sale prior to the critical date of
the ’689 patent; and (2) that Powerteq’s expert, Dr. Brogi-
oli, analyzed source code from the PP3. Because the por-
tions of the testimony establishing these facts are the only
Br. 12–31 (characterizing the testimony as hearsay but cit-
ing only the personal knowledge requirement of Federal
Rule of Evidence 602 in support of exclusion). “[T]he rules
governing hearsay and personal knowledge are distinct
and address different evidentiary defects.” United States
v. Duran, 941 F.3d 435, 448 (10th Cir. 2019). A party must
raise separate personal knowledge and hearsay objections
to preserve both challenges. Id. To the extent that Defin-
itive now raises a separate double hearsay objection, see
Appellant’s Br. 30–31, Definitive does not identify where
that objection was properly preserved below, and Definitive
does not contend that there was plain error. J.A. 3487–90
(raising only a personal knowledge objection under Rule
602 in response to Powerteq’s motion for summary judg-
ment); Tesone v. Empire Mktg. Strategies, 942 F.3d 979,
991 (10th Cir. 2019); Bird v. West Valley City, 832 F.3d
1188, 1194 n.1 (10th Cir. 2016).
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DEFINITIVE HOLDINGS v. POWERTEQ 8
portions of Mr. Ramsey’s deposition testimony necessary
for the disposition of the case, we do not need to decide
whether other portions of Mr. Ramsey’s deposition testi-
mony should have been excluded from consideration or how
the Tenth Circuit would approach4 the use of Rule 30(b)(6)
deposition testimony at summary judgment. King
Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278
(Fed. Cir. 2010) (“As an appellate court, we are not limited
to a district court’s stated reasons for invalidating claims
and can affirm a grant of summary judgment on any
ground supported by the record and adequately raised be-
low.”); Powerteq LLC’s Motion for Summary Judgment
at 30 n.12, Definitive Holdings v. Powerteq, No. 2:18-CV-
00844-DBB-DBP, 2023 WL 9319765 (D. Utah Aug. 23,
2023), Dkt. No. 219 (“If the Court accepts Dr. Brogioli’s
declaration, the Hypertech Source Code, Mr. Ramsey’s
substantive testimony, or the Hypertech product manual
(individually or together), then Powerteq would have suffi-
ciently proven how the PP3 operates. Additionally, if the
Court accepts [Mr.] Ramsey as a custodian and any Hyper-
tech document, then there can be no question that the PP3
was on sale in the United States prior to the critical date
and qualifies as prior art.”); Decision at 1255.
“The foundational requirement for personal knowledge
‘is not difficult to meet.’” Duran, 941 F.3d at 448 (quoting
United States v. Gutierrez de Lopez, 761 F.3d 1123, 1132
4 Powerteq contends that the Tenth Circuit has
“squarely addressed the issue” by “reject[ing] the argument
that ‘second-hand’ testimony from a Rule 30(b)(6) deponent
impairs its credibility at summary judgment.” Appellee’s
Br. 20 (quoting Sidlo v. MillerCoors, LLC, 718 F. App’x
718, 729 n.11 (10th Cir. 2018)). Sidlo is “not binding prec-
edent,” and given our disposition of the case we do not de-
cide how much “persuasive value” the Tenth Circuit would
give it. Sidlo, 718 F. App’x at 722 n.*.
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DEFINITIVE HOLDINGS v. POWERTEQ 9
(10th Cir. 2014)). “The district court considers only
whether ‘a rational juror could conclude based on a wit-
ness’s testimony that he or she has personal knowledge of
a fact.’” Id. (quoting Gutierrez de Lopez, 761 F.3d at 1132).
A rational juror could conclude based on Mr. Ramsey’s
testimony that he had personal knowledge of Hypertech’s
record-keeping practices. Mr. Ramsey testified that he had
personally reviewed sales records indicating that the PP3
device had been sold prior to the critical date of the patent.
J.A. 6700 at 11:7–24. He testified that he knew that these
sales records were from a computer used in the 2000s and
that he knew the function of the server. J.A. 6700–01
at 11:20–12:8.5 He also testified as to his personal
knowledge of Hypertech’s record-keeping process, includ-
ing how documents were marked by year and how the doc-
uments were organized. See J.A. 6700–01 at 11:14–12:20,
J.A. 6704 at 15:1–12. “Evidence to prove personal
knowledge may consist of the witness’s own testimony,”
Fed. R. Evid. 602, and in the Tenth Circuit a witness who
“personally examined” reports “ha[s] personal knowledge
of their content.” Bryant v. Farmers Ins. Exch., 432 F.3d
1114, 1123 (10th Cir. 2005) (ruling audit reports were ad-
missible despite the witness “not know[ing] how these au-
dits were performed, who performed the audits, or the
methodology used in conducting these audits”). A rational
juror could determine from Mr. Ramsey’s testimony that
he had sufficient personal knowledge of Hypertech’s rec-
ord-keeping to authenticate the sales records of the PP3.
And Definitive did not challenge the admissibility of the
5 Certain portions of testimony were marked as con-
fidential in the appendix but quoted without redaction in
the public briefing. See, e.g., Appellee’s Br. 9–10 (quoting
J.A. 7031–32 at 11:20–12:8; J.A. 6700–01 at 11:20–12:8).
“Unredacted material included in nonconfidential or un-
sealed filings is presumed to be public.” Fed. Cir. R. 25.1.
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DEFINITIVE HOLDINGS v. POWERTEQ 10
sales records in its opening brief and has thus forfeited any
independent objection to those records. See Sawyers
v. Norton, 962 F.3d 1270, 1286 (10th Cir. 2020). Thus, the
district court did not abuse its discretion by considering the
sales records at the summary judgment stage.
Similarly, a rational juror could conclude based on
Mr. Ramsey’s testimony that he had personal knowledge
that the PP3 was running the source code that Powerteq’s
expert relied upon prior to the critical date of the ’689 pa-
tent. Mr. Ramsey testified that he and his colleagues found
a PP3 device that was manufactured in 1996 and kept in
its original package with an accompanying installation
guide. J.A. 6742–44 at 53:23–55:20. Mr. Ramsey testified
that “we took apart” the device that was manufactured
prior to the critical date in explaining his personal
knowledge of the device. J.A. 6742–43 at 53:13–54:5.
Mr. Ramsey also explained that the device had serial and
date codes, allowing him to determine that the PP3 was
manufactured and sold prior to the critical date. J.A. 6743
at 54:6–8. He testified as to the particular version number
discovered on this 1996 device and testified that he person-
ally compared that version number to a revision list show-
ing that software version was from 1996. J.A. 6742–43
at 53:13–54:5; J.A. 6709–10 at 20:17–21:19. He further
testified that Hypertech’s IT manager extracted the rele-
vant source code from collected hard drives. J.A. 6707
at 18:3–12. The source code reviewed had the same version
number as the device in the sealed package and was dated
April 8, 1996. J.A. 5519. In the Tenth Circuit, Mr. Ram-
sey’s testimony is sufficient for a rational juror to conclude
that Mr. Ramsey had personal knowledge of the date of the
source code Dr. Brogioli reviewed. See Duran, 941 F.3d
at 448 n.9. A rational juror could conclude that Mr. Ram-
sey had personal knowledge that a PP3 device manufac-
tured prior to the critical date was using the source code
that Dr. Brogioli, Powerteq’s expert, analyzed. Accord-
ingly, the district court did not abuse its discretion by
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DEFINITIVE HOLDINGS v. POWERTEQ 11
considering Mr. Ramsey’s testimony regarding the date
and versioning of the source code in deciding summary
judgment.
B.
We turn now to Definitive’s challenge to the source
code itself. Powerteq and the district court relied on the
expert testimony of Dr. Brogioli describing the source code
to demonstrate that the PP3 embodied every limitation of
the asserted claims of the ’689 patent. See Decision
at 1258–62. Definitive contends that source code is inad-
missible hearsay, Appellant’s Br. 32–35, and that the PP3
source code is not subject to a hearsay exception as a busi-
ness record, Appellant’s Br. 36–42. Because we conclude
that the relevant portion of the source code was not hear-
say, we do not reach whether any hearsay exception ap-
plies.
Hearsay is an out-of-court statement offered for “the
truth of the matter asserted.” Fed. R. Evid. 801(c). “An
order or instruction is, by its nature, neither true nor false
and thus cannot be offered for its truth.” United States
v. Shepherd, 739 F.2d 510, 514 (10th Cir. 1984). Thus,
commands—like “dispose of a bag” or “burn a photo al-
bum”—are “instructions . . . not offered for their truth.”
United States v. Rutland, 705 F.3d 1238, 1252–53
(10th Cir. 2013). Instead, such instructions are offered to
show that the commands “occurred rather than to prove
the truth of something asserted.” Shepherd, 739 F.2d
at 514. So too for source code. While comments and de-
scriptions6 in source code may include statements that
6 Powerteq asserts that none of the code description
text, only the “computer commands” themselves, were nec-
essary to the district court’s § 102(b) analysis. Appellee’s
Br. 34. Definitive does not dispute this assertion in its
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DEFINITIVE HOLDINGS v. POWERTEQ 12
could be offered for their truth, the actual source code com-
mands themselves are not offered for their truth and thus
are not hearsay.
Our decision in Wi-Lan Inc. v. Sharp Electronics Corp.,
992 F.3d 1366, 1371–74 (Fed. Cir. 2021), is not to the con-
trary. In Wi-Lan, we applied Third Circuit law in consid-
ering whether a paper printout of source code was a
business record subject to a hearsay exception under Fed-
eral Rule of Evidence 803(6). Id. at 1373. We concluded
that it was not, because there was “a lack of trustworthi-
ness.” Id. (quoting Fed. R. Evid. 803(6)(E)). We deter-
mined that the district court did not abuse its discretion in
finding a lack of trustworthiness because the source code
contained inconsistent dates; there was no evidence of code
revisions; and manufacturers claimed they could not pro-
duce a particular version of source code before eventually
producing it. Id. We specifically noted the presence of
“added commentary on the printed excerpts.” Id. at 1371
(quotation omitted). Wi-Lan does not suggest that authen-
ticated source-code commands are hearsay; Wi-Lan merely
explains whether unauthenticated printouts are
briefing. See generally Appellant’s Reply Br. Accordingly,
we do not address whether any descriptions in the source
code were hearsay, whether they would be admissible un-
der the business records exception, or whether an expert’s
reliance on any hearsay comments would be permissible.
See, e.g., Hasan v. AIG Prop. Cas. Co., 935 F.3d 1092, 1099
(10th Cir. 2019) (“When an appellee advances an alterna-
tive ground for upholding a ruling by the district judge, and
the appellant does not respond in his reply brief . . . , he
[does not] concede[ ] the correctness of the ruling . . . . But
he waives, as a practical matter anyway, any objections not
obvious to the court to specific points urged by the appel-
lee.” (alterations in original) (quoting Hardy v. City Optical
Inc., 39 F.3d 765, 771 (7th Cir. 1994)).
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DEFINITIVE HOLDINGS v. POWERTEQ 13
sufficiently reliable. Id. at 1371–74. No such concerns are
present here, where the evidence at issue is Dr. Brogioli’s
testimony about source code instructions. Because we hold
that source code commands are not hearsay, the district
court did not abuse its discretion in considering expert tes-
timony about source code commands in granting summary
judgment.
C.
Definitive contends that even if the sales records and
the source code are admissible, summary judgment is in-
appropriate because there is insufficient evidence of sales
of the PP3. See Appellant’s Br. 31–32, 42–45. We disagree.
Taken together and as authenticated by Mr. Ramsey, the
sales records, installation guide, and the source code estab-
lish the necessary elements for summary judgment of in-
validity.
The sales records, combined with Mr. Ramsey’s testi-
mony within his personal knowledge, establish that sales
of the PP3 were made at least by 1996, well before the crit-
ical date of the ’689 patent (March 30, 2000). Cf. Lossia
v. Flagstar Bancorp, Inc., 895 F.3d 423, 430–31 (6th Cir.
2018) (holding that any hearsay statements in a 30(b)(6)
deposition were admissible for summary judgment pur-
poses because “the corporate designee’s testimony on this
point merely confirmed the evidence contained in the batch
files” and “[a]bsent some suggestion to the contrary, it is
reasonable to expect that [other] employees would provide
materially the same testimony that the corporate designee
summarized in her deposition”). The sales records indicate
that Power Programmers were sold in the 1990s for certain
car models. See J.A. 6223. The installation guide, found in
a 1996 package, contains installation instructions for the
PP3 for the same models. J.A. 4323–36. These documents,
together with Mr. Ramsey’s testimony authenticating
these documents and describing his personal knowledge of
the 1996 package, demonstrate that the PP3 (using the
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DEFINITIVE HOLDINGS v. POWERTEQ 14
source code that Dr. Brogioli analyzed) was sold to the pub-
lic prior to the critical date of the ’689 patent.
Definitive contends that the district court improperly
considered the clear and convincing evidence standard.
Appellant’s Br. 42–45; but see Decision at 1251–52 (citing
the presumption of validity and the clear and convincing
evidence standard). Definitive argues that because
Mr. Ramsey indicated that he did not know the exact date
that the relevant software version was implemented in the
PP3, a reasonable jury could conclude that the software
version was not implemented prior to the critical date of
the ’689 patent. See Appellant’s Br. 43–44. However,
Mr. Ramsey testified that the relevant software code ver-
sion was completed on April 8, 1996, and that it would be
implemented by approximately May 1, 1996, and thus be-
fore the critical date. J.A. 6710–11 at 21:14–22:19.
Mr. Ramsey explained how software would take several
weeks of testing, and that the revision was implemented
quickly based on the error it was designed to address. Id.
Moreover, Mr. Ramsey indicated that he examined a 1996
device with the relevant source code version implemented.
J.A. 6742–43 at 53:23–54:12. From this evidence, no rea-
sonable jury could conclude that the source code was not
implemented in the PP3 by March 30, 2000.
Mr. Ramsey’s testimony, the dating of the source code,
and the sales records provide evidence that the PP3 was
sold prior to the critical date of the ’689 patent. See, e.g.,
Ingenico Inc. v. IOENGINE, LLC, 136 F.4th 1354, 1361–62
(Fed. Cir. 2025) (“It is true that public use requires actual
use. But circumstantial evidence is not second-class to di-
rect evidence. . . . [E]ither direct or circumstantial evi-
dence corroborating public use may be sufficient for a party
to meet its burden of proof.”) (citations and quotation
marks omitted). Definitive has provided no contrary evi-
dence and did not dispute Powerteq’s statement of undis-
puted material facts except to argue that it is based on
inadmissible evidence. Decision at 1252. Accordingly, the
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DEFINITIVE HOLDINGS v. POWERTEQ 15
district court did not err in concluding that there was no
genuine dispute of material fact that the PP3 was sold prior
to the critical date of the ’689 patent.
The source code analyzed by Dr. Brogioli establishes
that the PP3, as sold in 1996, embodies every limitation of
the asserted claims of the ’689 patent. The district court
carefully walked through each asserted claim, explaining
for each asserted claim how the PP3 fully embodies that
claim. See Decision at 1258–62. Definitive has not dis-
puted the presence of any claim limitation in the PP3. See
generally Appellant’s Br. Thus, the district court did not
err in determining that the 1996 PP3 embodies every as-
serted claim of the ’689 patent.
Definitive chose not to dispute the facts and instead re-
lied on evidentiary challenges. Decision at 1252. Having
lost those evidentiary challenges, it cannot now establish
that a genuine dispute of material fact precludes summary
judgment.
D.
Lastly, Definitive argues that even if Hypertech sold
the PP3 embodying the asserted claims of the ’689 patent
more than one year before the priority date of the ’689 pa-
tent, summary judgment was inappropriate because the
PP3 was not prior art. Appellant’s Br. 45–58. Definitive
contends that under pre-AIA 35 U.S.C. § 102(b), prior art
must disclose to the public how to perform the patented
method, and that the sale of the PP3 did not disclose how
to perform the method of the ’689 patent. Appellant’s
Br. 47–49.
However, triggering the on-sale bar does not “require
that the sale make the details of the invention available to
the public.” Helsinn Healthcare S.A. v. Teva Pharms. USA,
Inc., 586 U.S. 123, 125 (2019). An offer for sale may trigger
the bar “without regard to whether the offer discloses each
detail of the invention.” Id. at 130 (citing Pfaff v. Wells
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DEFINITIVE HOLDINGS v. POWERTEQ 16
Elecs., Inc., 525 U.S. 55, 67 (1998)). “[T]he question is not
whether the sale, even a third party sale, ‘discloses’ the in-
vention at the time of sale, but whether the sale relates to
a device that embodies the invention.” J.A. LaPorte, Inc.
v. Norfolk Dredging Co., 787 F.2d 1577, 1583 (Fed. Cir.
1986); see also Helsinn, 586 U.S. at 131 (“The Federal Cir-
cuit . . . has long held that ‘secret sales’ can invalidate a pa-
tent.”). If so, then the patented invention is “on sale” under
35 U.S.C. § 102(b).7 See generally Pfaff, 525 U.S. at 67
(“[T]he on-sale bar applies when two conditions are satis-
fied before the critical date. First, the product must be the
subject of a commercial offer for sale. . . . Second, the in-
vention must be ready for patenting.”).
In J.A. LaPorte, we rejected a “broad proposition that
the ‘secret’ commercialization of an invention by a third
party creates no bar.” 787 F.2d at 1582. Instead, we dis-
tinguished cases where the on-sale bar was not triggered
when “[a] process had been placed on sale by the third
party’s sale of a product made by [a] process . . . not discov-
erable from the product,” rather than a “sale of the process
per se.” Id. (discussing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983)). Thus, the ques-
tion in third-party secret sale cases is whether the third-
party sale involves a product embodying the claimed fea-
tures, or if the third-party sale is of a product that is man-
ufactured using a claimed process or apparatus that was
secret or otherwise not discoverable from the product.
7 The parties argued this case as both an on-sale bar
and a public use case. See Appellant’s Br. 47–58; Decision
at 1255 (“Powerteq argues that the Hypertech device is an-
ticipatory prior art because it was on sale and in public use
more than one year in advance of Definitive’s patent appli-
cation.”). Having decided that the on-sale bar applies, we
need not consider public use.
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DEFINITIVE HOLDINGS v. POWERTEQ 17
The PP3 embodied the patented methods and apparat-
uses. See BASF Corp. v. SNF Holding Co., 955 F.3d 958,
970 (Fed. Cir. 2020) (“Where a product embodies essential
features of the patented invention, a sale of the product is
tantamount to a sale of the process performed by that prod-
uct and thus creates an on-sale bar to the process claims as
well.” (cleaned up)). The asserted claims cover a “method
for upgrading software in an engine controller,” ’689 patent
claim 1, and an “apparatus for upgrading software in an
engine controller,” ’689 patent claim 27. The installation
guide to the PP3 explains how “an individual can repro-
gram a 1996 or newer vehicle sold in the United States” by
using the sold apparatus. J.A. 4326. The PP3 was then
sold to individual members of the public. See generally Sec-
tion III.C., supra. This case is not a case where Hypertech
had a secret manufacturing process that permitted it to
make a product in a new way undiscoverable from the prod-
uct itself. Cf. Gore, 721 F.2d at 1550 (involving a new
method to make tape, where only the tape itself was sold,
and the tape was indistinguishable from other tape). In-
stead, Hypertech was directly selling to the public the abil-
ity 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 pa-
tentee to remove them from the public domain would “with-
draw[ ] from the public domain technology already
available to the public.” Kimberly-Clark Corp. v. Johnson
& Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984). We reject
Definitive’s argument that the PP3 was not prior art under
35 U.S.C. § 102(b). Accordingly, the district court did not
err in determining that the asserted claims of the ’689 pa-
tent are invalid.
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DEFINITIVE HOLDINGS v. POWERTEQ 18
IV. CONCLUSION
We have considered Definitive’s remaining arguments
and find them unpersuasive. We affirm the district court’s
judgment of invalidity under pre-AIA 35 U.S.C. § 102(b).
AFFIRMED
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