Definitive Holdings v. Powerteq LLC, Appeal No. 2024-1761 (Fed. Cir. Apr. 14, 2026)

Our Case of the Week concerns an invalidity finding over a piece of prior art that was on sale in the 1990s, and the patent owner’s attempt to avoid that finding through a variety of arguments.  The Federal Circuit affirmed the district court’s decisions in all respects.

The patent in suit recited a technique for upgrading on board vehicle software in an engine’s onboard control unit.  It turns out the claimed invention had been sold in 1996 by a third-party company.  Defendant in this case took discovery concerning that third party system, including obtaining source code from the 1996 product, obtaining a new-in-the-box sample of that product, and taking a deposition of a corporate witness pursuant to Rule 30(b)(6).  That corporate witness joined the third-party company years after the product was sold, but apparently performed his reasonable investigation into the product before testifying.

On summary judgment, the district court held that the patent was invalid.  Definitive Holdings challenged the summary judgment decision on three fronts.  First, it argued that the 30(b)(6) witness’s testimony was inadmissible for lack of personal knowledge.  Second, it argued that the source code was inadmissible as hearsay.  Third, it argued that prior sales were not relevant under Section 102 because users had no access to the source code in order to determine how the system worked.

With respect to the first argument, the Federal Circuit held that the question of 30(b)(6) testimony admissibility was not necessary to reach because the witness had sufficient personal knowledge through his reasonable investigation.  That  witness had personal knowledge of the third party’s record keeping, which was sufficient to authenticate the documents dating years before he was hired.  Under applicable Tenth Circuit law, “a witness who personally examined reports has personal knowledge of their content,” and that was enough for the 30(b)(6) witness to testify here.

With respect to the source code being hearsay, the Federal Circuit rejected the argument because source code is a series of commands, not out of court statements made for the truth of the matter asserted.

With respect to the argument that prior sales do not count because the technology in the products was secret, the Federal Circuit readily rejected that argument, as it has in the past.  Triggering the on-sale bar does not require that the sale make the details of the invention available to the public.  Indeed, if the law were otherwise, a member of the public could purchase a product only to have its rights to use it stripped away when a patent is later obtained for that product.  The Federal Circuit noted that patent laws have never tolerated stripping rights out of the public domain.  The Court distinguished cases in which a process for manufacturing a product was secret, rather than the features of the product itself:

“the question in third-party secret sale cases is whether the third-party sale involves a product embodying the claimed features, or if the third-party sale is of a product that is manufactured using a claimed process or apparatus that was secret or otherwise not discoverable from the product.”

In cases involving secret manufacturing techniques, the on-sale bar may not apply.  But in cases like this, where the product itself embodied the patent claims, the on-sale bar applies.

The opinion can be found here.

By Nika Aldrich

ALSO THIS WEEK

International Medical Devices, Inc. v. Robert Cornell, Appeal No. 2025-1580, -1605 (Fed. Cir. Apr. 17, 2026)

The Federal Circuit decided consolidated appeals involving claims for trade secrets, counterfeiting, breach of contract, and inventorship arising from competing penile implant technologies.  The court reversed denial of JMOL for the defendants on the trade secret and contract claims because plaintiffs’ four alleged trade secrets were generally known or not kept secret, and thus not protectable under California law or covered as confidential under the NDA at issue.   This was also dispositive as to the inventorship claim, on which the Court held that the purported inventor’s asserted contributions were the same as other generally known ideas, and thus would not be able to constitute an inventive contribution.  Accordingly, the Federal Circuit reversed the district court’s JMOL of no patent invalidity for failure to name the true inventors.  However, the Court affirmed denial of defendants’ JMOL on the trademark-based counterfeiting claim, finding there was sufficient evidence to sustain the jury’s liability verdict.

The opinion can be found here.

By Jason Evans

Teva Pharmaceuticals International GmbH v. Eli Lilly and Company, Appeal No. 2024-1094 (Fed. Cir. Apr. 16, 2026)

The Federal Circuit reinstated a jury verdict against Eli Lilly for willful infringement of Teva’s patents on certain headache treatments, reversing the district court’s grant of JMOL for lack of written description or enablement under 35 U.S.C. § 112.  In so holding, the reviewing panel collected and clarified precedent concerning “a well-known genus used as part of a different invention,” indicating a relaxed standard of disclosure for claims that recite use of a genus of compounds without being directed to that genus as the purported invention.  The Court distinguished cases like Amgen Inc. v. Sanofi, 987 F.3d 1080 (Fed. Cir. 2021), in which it had prominently enforced Section 112 requirements against broad claims directed to a novel genus.

Teva’s claims are directed to the use of humanized antibodies that antagonize the action of CGRP—a protein associated with increased blood flow—to treat headaches.  As relevant to the appeal, Teva also owned patents directed to the humanized anti-CGRP antagonist antibodies themselves, which had been invalidated in an inter partes review challenge brought by Eli Lilly.  Teva’s associated “headache patents” survived Eli Lilly’s IPRs, but following a jury verdict in subsequent infringement litigation, the district court granted JMOL of invalidity under Section 112 based on the undue experimentation that would be required for a POSITA to identify effective humanized antibodies.

In reversing, the Federal Circuit explained that the fact that the “headache patents” were directed to a particular use of the antibodies—as opposed to the antibodies themselves—was material to the Section 112 inquiry.  The Court found that especially in light of the IPR record on Teva’s antibody claims, a reasonable jury could have found that the creation of humanized anti-CGRP antagonist antibodies was itself well-known and routine—indeed, while the headache patents’ specification disclosed only one humanized example of an antibody for use in the claims, it identified many known anti-CGRP antagonist mouse antibodies, as well as known methods for humanization.  Because such antibodies and methods were well-known in the prior art, the Court found they were sufficiently described and enabled for purposes of the claimed invention—i.e. their use in the treatment of headaches—and reversed the lower court’s JMOL grant.

The opinion can be found here.

By Jason A. Wrubleski

VLSI Technology LLC v. Intel Corporation, Appeal No. 2024-1772 (Fed. Cir. Apr. 14, 2026)

In one of the cases between VLSI and Intel, the Federal Circuit rescued VLSI’s claims from summary judgment, finding that a pretrial stipulation admitted sales of products in the United States, which was contrary to the district court’s finding on summary judgment.  Interpreting the language of the pretrial stipulation as a contract, the Court found it could only be reasonably construed in one way.  The Federal Circuit also reversed the district court’s exclusion of a doctrine of equivalents theory, finding that a prosecution history disclaimer did not apply because a statement made during prosecution did not amount to clear and convincing disclaimer.  Meanwhile, the Court affirmed the exclusion of certain damages expert testimony, finding that the district court did not abuse its discretion in excluding those theories pursuant to the Northern District of California Local Patent Rules.

The opinion can be found here.

By Nika Aldrich