The Federal Circuit has ruled in the case of Definitive Holdings, LLC v. Powerteq LLC that patent claims were invalid because the invention was on sale in the US more than a year before the patent filing date, even though the details of the invention weren’t publicly disclosed at the time.
Definitive Holdings, LLC sued Powerteq LLC for alleged infringement of patent claims relating to reprogramming engine controllers.
The ‘689 patent
claims methods and apparatuses for “upgrading software in an engine controller,” by connecting a device to an engine controller, where the device can replace portions of the stock engine control software with new data blocks while retaining an image of the stock engine control software.
A district court granted Powerteq’s motion for summary judgment of invalidity under the pre-America Invents Act (“AIA”) version of 35 U.S.C. § 102(b).
Sales made more than one year before a patent’s priority date implicate the on-sale bar of 35 U.S.C. § 102(b) – i.e., the claimed invention isn’t patentable. In this case, the critical date is March 30, 2000.
Powerteq argued that, by at least 1996, non-party Hypertech Inc. sold a device named the “Hypertech Power Programmer III” (the “PP3”) that embodied all limitations of the asserted claims of the ’689 patent.
Definitive objected to the admissibility of the deposition testimony of Hypertech’s witness, CEO and owner Mr. Ramsey, that “Hypertech was based in the United States and that it sold PP3 units in the United States beginning in 1994.”
The district court determined that Mr. Ramsey’s deposition testimony was admissible, notwithstanding his lack of personal knowledge, because Federal Rule of Civil Procedure 30(b)(6) permits corporate representatives to testify outside of their personal knowledge.
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.”
The Federal Circuit found that Mr. Ramsey’s testimony was within his personal knowledge and that he could authenticate the PP3 sales records, which demonstrate that the PP3 was on sale prior to the critical date of the ’689 patent.
Definitive also argued that 35 U.S.C. § 102(b) doesn’t apply to third-party sales when the limitations of the asserted patent claims are not publicly disclosed.
The court held that
triggering the on-sale bar does not “require that the sale make the details of the invention available to the public.” … An offer for sale may trigger the bar “without regard to whether the offer discloses each detail of the invention.”
Also, said the court,
[T]he 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.
Here, said the court,
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 product itself. … Instead, Hypertech was directly selling to the public the ability 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 patentee to remove them from the public domain would “withdraw[ ] from the public domain technology already available to the public.”
The court rejected Definitive’s argument that the PP3 was not prior art under 35 U.S.C. § 102(b) and held that the district court did not err in determining that the asserted claims of the ’689 patent were invalid.
Just like the haiku above, we like to keep our posts short and sweet. Hopefully, you found this bite-sized information helpful. If you would like more information, please do not hesitate to contact us here: https://aeonlaw.com/contact-us/.
