Selling a device that runs secret code bars a patent on what the code does, and the code itself proves it

2026-04-14Fed. Cir.

Definitive Holdings, LLC v. Powerteq LLC, No. 2024-1761 (Fed. Cir. Apr. 14, 2026) (precedential) (Cunningham, J., joined by Moore, C.J., and Dyk, J.), affirming summary judgment of the United States District Court for the District of Utah, No. 2:18-cv-00844-DBB (Barlow, J.), reported at 731 F. Supp. 3d 1243 (D. Utah 2024)

United States Patent No. 8,458,689, with a priority date of March 30, 2001, claims methods and apparatuses for upgrading software in an engine controller. Definitive Holdings asserted eight claims against Powerteq, and the District of Utah granted summary judgment that all were invalid under the on-sale bar of pre-America Invents Act Section 102(b) of Title 35 of the United States Code. The prior sale was by non-party Hypertech Inc. of its Power Programmer III, a device that saved and restored original engine software and reprogrammed vehicles, before the critical date of March 30, 2000. The evidence was Hypertech's sales records, a 1996 installation guide, dated source code and the testimony of Hypertech's chief executive and owner. The Federal Circuit affirmed in an opinion by Judge Cunningham, joined by Chief Judge Moore and Judge Dyk. It held that the bar does not "require that the sale make the details of the invention available to the public," the question being "whether the sale relates to a device that embodies the invention," and noted that Definitive had not disputed that the device embodied every claim limitation. It held that "the actual source code commands themselves are not offered for their truth and thus are not hearsay," and that the executive's testimony was enough to authenticate the sales records and tie the analyzed code to the 1996 device.

What it changesSelling a product puts its inventions on sale even when no customer can see how they work, and this decision applies that rule to software running inside a sold device. A company that ships hardware with an embedded model, a firmware update or an on-device inference engine starts the one-year clock on every method that product performs, whether or not the code is encrypted or obfuscated. File before the first commercial shipment, including paid pilots, and treat the device release calendar as a filing calendar. The evidentiary holding matters to anyone defending against an old software patent: archived source code and dated builds of products sold before the critical date are admissible to show what the product did, so an engineering archive, the defendant's or a third party's, is a prior art source worth searching before paying a demand. The patent was governed by pre-America Invents Act law, but the court relied on Helsinn, which carries the same on-sale rule into the current statute.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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