Summary
The United States Court of Appeals for the Federal Circuit affirmed summary judgment invalidating Definitive Holdings’ asserted patent claims under the pre-America Invents Act on-sale bar in 35 U.S.C. § 102(b). The court held that the evidence adequately established that Hypertech’s Power Programmer III was sold before the critical date and embodied the asserted claims. It also held that the relevant source-code commands were not hearsay and that the sale need not disclose the invention’s details to the public to trigger the on-sale bar.
Topics
Practice areas
Questions Presented
- Whether the district court properly considered the Rule 30(b)(6) deposition testimony of Hypertech's representative at summary judgment despite the appellant's contention that the testimony lacked a sufficient foundation of personal knowledge.
- Whether the PP3 source-code commands were inadmissible hearsay.
- Whether the evidence established, without a genuine dispute of material fact, that the PP3 was sold before the patent's critical date and embodied every asserted claim limitation.
- Whether a pre-AIA § 102(b) on-sale bar requires that a sale expressly disclose the details or functionality of the claimed invention to the public.
Holdings
- The district court did not abuse its discretion by considering Ramsey's testimony concerning the PP3 sales records and the date and version of the source code because a rational juror could conclude that Ramsey had personal knowledge of those matters.
- Authenticated source-code commands are not hearsay because they are instructions or commands offered to show what the computer did, not statements offered for the truth of an asserted proposition.
- The sales records, installation guide, source code, expert analysis, and Ramsey's testimony established that the PP3 was sold before the critical date and embodied every limitation of the asserted claims, leaving no genuine dispute of material fact.
- A sale triggering the pre-AIA § 102(b) on-sale bar need not expressly disclose every detail or the functionality of the claimed invention; the relevant question is whether the sale involved a product embodying the claimed invention.
Key quotations
“While comments and descriptions in source code may include statements that could be offered for their truth, the actual source code commands themselves are not offered for their truth and thus are not hearsay.” (11-12)
“However, triggering the on-sale bar does not “require that the sale make the details of the invention available to the public.”” (15-16)
“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.” (16)
Factual background
Definitive asserted claims concerning methods and apparatuses for upgrading engine-controller software. Powerteq presented evidence that Hypertech sold the Hypertech Power Programmer III, or PP3, by at least 1996, including sales records, an installation guide, source code, and testimony from Hypertech's corporate representative, Michael Ramsey. The Federal Circuit concluded that the evidence established that the PP3 sold before the March 30, 2000, critical date embodied every limitation of the asserted claims.
Procedural history
Definitive sued Powerteq for infringement of claims of U.S. Patent No. 8,458,689. Powerteq moved for summary judgment on several grounds, and the district court granted summary judgment of invalidity under pre-AIA § 102(b), concluding that the Hypertech Power Programmer III was sold before the critical date and embodied every limitation of the asserted claims. The Federal Circuit affirmed.