Joint Appendix One

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USFC2012-1095-05 

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{118234}{30-120615:135245}{061212} 

JOINT 

APPENDIX

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VOLUME I 

(A0001 - A0499) 

Nos. 2012-1095,-1136 

IN THE UNITED STATES COURT OF APPEALS 

FOR THE FEDERAL CIRCUIT 

FUTURELOGIC, INC., 

PLAINTIFF-APPELLANT, 

V. 

NANOPTIX, INC., 

DEFENDANT-CROSS APPELLANT. 

APPEALS FROM THE UNITED STATES DISTRICT COURT 

_t__N! 2 107Z 

J41,HIRI4Ly 

ct£Ri 

CENTRAL DISTRICT OF CALIFORNIA IN CASE NO. 10-CV-7678, 

JUDGE JOHN F. WALTER 

JOINT APPENDIX 

BRETT J. WILLIAMSON 

O'MELVENY & MYERS LLP 

610 Newport Center Drive, 17th Floor 

Newport Beach, California 92660-6429 

Telephone: (949) 760-9600 

Attorneys for Plaintiff-Appellant 

FutureLogic, Inc.

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2:10-cv-07678-JFW-DTB Document 124 Filed 11/15/11 Page 1 of 2 Page ID 

#:2562 

FUTURELOGIC, 1NC., 

V. 

Plaintiff/Counterdefendant, 

NANOPTIX, INC, 

Defendant/Counterclaimant. 

UNITED STATES DISTRICT COURT 

DISTRICT OF CALIFORNIA 

WESTERN DIVISION 

JS-6 

Case No, 2:10-CV-7678-JFW (DTB) 

FINAL JUDGMENT 

Defendant's Motion for Summary Judgment of Invalidity of U.S. Patent No. 

7,594,855 ('"855 Patent"), Docket No. 55, came before the Hon. John F. Walter, 

District Judge Presiding. The evidence presented having been fully considered and 

a decision having been fully rendered on November 2, 2011, in the Court's Order, 

Docket No. 121, the Court enters final judgment as follows: 

IT IS ORDERED AND ADJUDGED that: 

Proposed Final -1- 

Judgment 

-AO001-

Cas, 

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2:10-cv-07678-JFW-DTB Document 124 Filed 11/15/11 Page2 of 2 Page ID 

#:2563 

. 

2. 

. 

, 

, 

U.S. Patent No, 7,594,855 is invalid under 35 U.S.C. § 102(b); 

Plaintiff's Complaint and Defendant's counterclaim for declaratory 

judgment of noninfringement, and all defenses and counterclaims other 

than for invalidity under 35 U.S.C. § 102(b), are dismissed without 

prejudice as moot; 

Plaintiff's Motion for Summary Judgment of Infringement of the '855 

Patent, Docket No. 69, is denied; 

Defendant's Motion for Leave to File Amended Answer with 

Inequitable Conduct Counterclaim and Defense, Docket No. 64, is 

denied; and 

Defendant is entitled to costs as the prevailing party. 

Dated: November 15, 2011 

Proposed Final 

Judgment 

-A0002- 

ALTER 

UNI:gED..aS_ATES DISTRICT JUDGE 

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Case No. 

Title: 

PRESENT: 

Case 2:10-cv-07678-JFW-DTB Document 121 Filed 11/02111 Page 1 of 7 Page ID 

#:2547 

CV 10-7678-JFW (DTBx) 


CENTRAL DISTRICT OF CALIFORNIA 

FutureLogio, Inc.-v-Nanoptix, Inc. 

CIVIL MINUTES -- GENERAL 

HONORABLE JOHN F. WALTER, UNITED STATES DISTRICT JUDGE 

Shannon Reilly None Present 

Courtroom Deputy Court Reporter 

ATTORNEYS PRESENT FOR PLAINTIFFS: 

None 

PRIORITY SEND 

Date: November 2, 2011 

ATTORNEYS PRESENT FOR DEFENDANTS: 

None 

PROCEEDINGS (IN CHAMBERS): ORDER GRANTING DEFENDANT'S MOTION FOR 

SUMMARY JUDGMENT OF INVALIDITY OF THE '855 

PATENT [filed 9/28/2011; Docket No. 55] 

On September 28, 2011, Defendant Nanoptix, Inc. ("Defendant") filed a Motion for Summary 

Judgment of Invalidity of the '855 Patent. On October 7, 2011, Plaintiff FutureLogic, Inc. ("Plaintiff' 

or "FutureLogic") filed its Opposition. On October 17, 2011, Defendant filed a Reply. Pursuant to 

Rule 78 of the Federal Rules of Civil Procedure and Local Rule 7-15, the Court finds that this 

matter is appropriate for decision without oral argument. The hearing calendared for November 7, 

2011 is hereby vacated and the matter taken off calendar. After considering the moving, opposing, 

and reply papers and the arguments therein, the Court rules as follows: 

I. FACTUAL AND PROCEDURAL BACKGROUND I 

On October 14, 2010, FutureLogic, Inc. filed this action against Defendant for infringement 

of United States Patent No. 7,594,855 ("the '855 Patent"), entitled "Method and Apparatus for 

Gaming Promotional Printer." The '855 Patent covers a promotional printer that prints vouchers 

and coupons for gaming customers, such as bar-coded redemption tickets and buffet coupons. 

Among other limitations, independent claims 1, 36 and 71 of the '855 Patent claim a promotional 

printer with a dual port -- a main communication port adapted to receive voucher data and an 

auxiliary communication port adapted to receive coupon data. 

1The Court has considered the facts in the light most favorable to the nonmoving party, 

FutureLogic. In addition, to the extent that the Court has relied on evidence to which the parties 

have objected, the Court has considered and overruled those objections. As to the remaining 

objections, the Court finds that it is unnecessary to rule on those objections because the disputed 

evidence was not relied on by the Court. 

Page 1 of 7 Initials of Deputy Clerk s_z_r 

-A0003-

Case 2:10-cv-07678-JFW-DTB Document 121 Filed 11/02/11 Page 2 of 7 Page ID 

#:2548 

In its Answer and Counterclaims filed on December 27, 2010, Defendant alleged five 

affirmative defenses and two counterclaims including the invalidity of the '855 Patent. Defendant 

moves for summary judgment on its affirmative defense and counterclaim of invalidity pursuant to 

35 U.S.C. § 102(b) because an embodiment of the claimed invention was offered for sale, sold, or 

in public use more than one year prior to the patent's effective filing date. FutureLogic contends 

that its sales were experimental, and not commercial in nature, and thus subject to the 

experimental use exception. 

A. Reduction to Practice 

By January 21, 1998, FutureLogic had developed a prototype gas pump printer identified by 

model number PMC-2010-A, with the intention of offering it to Tokheim Manufacturing Company 

("Tokheim"), for whom FutureLogic had developed and sold other gas pump printers. The PMC- 

2010-A printer was designed to print vouchers and coupons using data received from two different 

sources -- namely, a gas pump controller and a network promotional controller. Although the 

PMC-2010-A printer was never offered to Tokheim or marketed by FutureLogic, the PMC-2010-A 

printer embodied the claims of the '855 Patent, and thus, the claimed invention was reduced to 

practice by January 21, 1998. 

B. Development Project with Coca-Cola 

In 1997, FutureLogic began working with the Coca-Cola Company ("Coca-Cola") on a 

project to develop a coupon printer to be used in its vending machines. FutureLogic was 

introduced to Coca-Cola by Dave Uland, president of a labeling equipment company known as 

Interleave Systems which had worked on previous projects for Coca-Cola Coca-Cola had initially 

approached Interleave and expressed an interest in developing a custom coupon printer for use in 

its vending machines. Mr. Uland recommended Mark Meyerhofer, who was then president of 

FutureLogic, to develop the custom coupon printer. 

On March 20 and March 31, 1997, FutureLogic signed two Non-Disclosure agreements 

prepared by Coca-Cola Neither agreement explicitly imposed nondisclosure obligations on Coca- 

Cola. However, the information exchanged between FutureLogic, Inc. and Coca-Cola during the 

printer development project was treated as confidential by all parties. 

FutureLogic's and Coca-Cola's design for the coupon printer evolved between 1997 and 

2000. Ultimately, FutureLogic designed a prototype coupon printer (the "PSA-66-VM Printer") for 

Coca-Cola that had separate communication ports which allowed the printer to receive data from 

separate sources to print vouchers and coupons. It is undisputed that the PSA-66-VM Printer 

embodied the claims of the '855 patent. 

On October 18, 1999, FutureLogic sent a product quotation to Coca-Cola for the PSA-66- 

VM Printer, erroneously referred to as the "PSA-66-CC" printer, which included prices for 

production units based upon quantity, ranging from $402.50 per unit to $457.50 per unit, and 

prices for development of prototypes in two phases: (t) $23,500 for prototype fees and delivery of 

2 alpha systems and 2 beta systems, and (2) $850 for delivery of each additional beta system. 

Page 2 of 7 Initials of Deputy Clerk sr 

-A0004- 

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Case2:10-cv-07678-JFW-DTB Document 121 Filed 11/02/11 Page3of7 Page ID 

#:2549 

According to the October 18, 1999 quotation: 

Exhibit 16. 

Prototype fees* are charged for the management and application of Futurelogic's 

printer technology including, but not limited to, printer design know-how, circuit 

designs, firmware source code, software source code, mechanical designs and fonts 

("Intellectual Property") to meet a specific Customer (issuer of fees) requirement. 

Consideration for these services entitles the Customer to the materials listed in the 

description column under "Delivery", and does not include Intellectual Property rights. 

*Fees include the tasks of design, to Customer's specifications of form and function, 

and prototype support necessary during the prototype evaluation phase .... 

Coca-Cola and its bottling company, Coca-Cola Enterprises, agreed to the terms of 

FutureLogic's product quotation, and in March or April of 2000, twenty-four PSA-66-VM printers 

were delivered to, and paid for, by Coca-Cola. In addition to paying $850 for each of the twenty- 

four printers delivered, Coca-Cola paid FutureLogic for the agreed-upon prototype fees. According 

to Mark Meyerhofer, the prototype fees merely allowed FutureLogic to recoup a portion of its 

development costs and did not result in a profit to FutureLogic. 

After the printers were delivered, Scott Shimmin of FutureLogic visited Coca-Cola 

Enterprises and assisted Coca-Cola personnel in the installation of the printers in Coca-Cola's 

vending machines. He also trained Coca-Cola personnel in how to load coupon data into the 

printers and how to print the coupons. Coca-Cola then placed the vending machines with the 

printers at selected locations throughout Cincinnati, Ohio for field tests to validate the "continuous 

printing ability of the coupon printer in the Marketing Vender" and to determine whether and how 

the printers would function under actual vending conditions. See Exhibit 29. Before the field tests 

commenced, Simmy Ahluwalia, a Coca-Cola representative, developed "test criteria that [he] 

want[ed] to expose the printer to[]" and asked FutureLogic for feedback. See id. The test criteria 

developed by Mr. Ahluwalia included subjecting the printer to various environmental conditions 

including, for example, different humidity levels and voltage variations. Scott Shimmin of 

FutureLogic made minor suggestions with respect to Coca-Cola's test criteria. 

During Coca-Cola's field testing of the PSA-66-VM printers, FutureLogic received periodic 

reports from Coca-Cola on the progress of the field tests and assisted in resolving various issues 

that Coca-Cola encountered during the field tests. When Coca-Cola began experiencing 

performance problems with the printers, FutureLogic provided Coca-Cola with a detailed form and 

requested Coca-Cola to use this form to identify any problems with the printers and to describe any 

actions taken by Coca Cola to successfully repair the printers. During the field tests, Coca-Cola 

returned two or three printers, which could not be repaired in the field, for replacement or repair by 

FutureLogic. 

Although Coca-Cola ultimately decided not to purchase any additional printers, Coca-Cola 

did not return the PSA-66-VM printers purchased from FutureLogic. 

Page 3 of 7 initials of Deputy Clerk sr 

-A0005-


#:2550 

C. Prosecution of the '855 Patent 

The application for the '855 Patent was filed with the United States Patent and Trademark 

Office ("PTO") on March 29, 2002. In its first office action dated March 21, 2007, the PTO rejected 

all pending claims of the '855 Patent based upon the Rowe '320 patent, and in some instances, a 

combination of the Rowe '320 patent and other prior art. 

On July 23, 2007, FutureLogic responded to the PTO's rejection, emphasizing the dual port 

aspect of its alleged invention: "Applicant's main communication port couples a promotional 

gaming printer to a gaming controller and a separate auxiliary communication port couples the 

gaming promotional printer to a promotional controller." 

On October 16, 2007, the PTO concluded its examination and issued its final rejection of all 

claims of the '855 Patent application. In its rejection, the PTO relied on the '320 Rowe patent and 

the Rowe '527 published application and, in some instances, combined the Rowe references with 

other prior art. 

On February 28, 2008, FutureLogic responded to the PTO's October 16, 2007 final office 

action. In its response, Future Logic submitted the Declaration of Mark Meyerhofer in which he 

attempted to antedate the '320 Rowe patent and the Rowe '527 published application. Specifically, 

Mark Meyerhofer stated that "the claimed invention of the '855 patent was actually reduced to 

practice in the United States of America before July 10, 2001 which is the earliest effective date of 

Rowe '320 and Rowe '527." In support of his position, Mr. Meyerhofer provided detailed technical 

drawings and photographs of the promotional printer that met the elements of the claimed 

invention. The promotional printer described in Mr. Meyerhofer's declaration was the same as the 

PSA-66-VM printer sold to Coca-Cola. 

On May 13, 2008, the PTO again rejected all claims of the '855 Patent application. In its 

third rejection, the PTO rejected the claims based upon the Rowe '065 published application and 

the Nichols '241 patent and, in some instances, other prior art. In response, in a further effort to 

antedate the new Rowe reference and other cited prior art, Mark Meyerhofer submitted another 

declaration stating that the claimed invention had been reduced to practice before December 19, 

2000. 

The PTO issued a final office action on December 3, 2008, in which the PTO questioned 

whether the claimed invention was either on sale or in public use as prohibited by 35 U.S.C. § 

102(b). In response, Mr. Meyerhofer represented that "the present invention was neither made 

accessible to the public, nor used commercially, nor offered for sale or sold before the critical date 

of March 29, 2001." Based on Mr. Meyerhofer's representations, the PTO issued a Notice of 

Allowance, and the '855 Patent was issued on September 29, 2009. 

II. LEGAL STANDARD 

Summary judgment is proper where "the movant shows that there is no genuine dispute as 

to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 

56(a). The moving party has the burden of demonstrating the absence of a genuine issue of fact 


-A0006- 

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#:2551 

for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). Once the moving party 

meets its burden, a party opposing a properly made and supported motion for summary judgment 

may not rest upon mere denials but must set out specific facts showing a genuine issue for trial. 

Id. at 250; Fed. R. Civ. P. 56(c), (e); see also Taylorv. List, 880 F.2d 1040, 1045 (9th Cir. 1989) 

("A summary judgment motion cannot be defeated by relying solely on conclusory allegations 

unsupported by factual data."). In particular, when the non-moving party bears the burden of 

proving an element essential to its case, that party must make a showing sufficient to establish a 

genuine issue of material fact with respect to the existence of that element or be subject to 

summary judgment. See Celotex Corp. v. Catrett, 477 US. 317, 322 (1986). "An issue of fact is 

not enough to defeat summary judgment; there must be a genuine issue of material fact, a dispute 

capable of affecting the outcome of the case." American International Group, Inc. v. American 

International Bank, 926 F.2d 829, 833 (gth Cir. 1991) (Kozinski, dissenting). 

An issue is genuine if evidence is produced that would allow a rational trier of fact to reach a 

verdict in favor of the non-moving party. Anderson, 477 U.S. at 248. "This requires evidence, not 

speculation." Meade v. Cedarapids, Inc., 164 F.3d 1218, 1225 (9th Cir. 1999). The Court must 

assume the truth of direct evidence set forth by the opposing party. See Hanon v. Dataproducts 

Corp., 976 F.2d 497, 507 (9th Cir. 1992). However, where circumstantial evidence is presented, 

the Court may consider the plausibility and reasonableness of inferences arising therefrom. See 

Anderson, 477 U.S. at 249-50; TW Elec. Sew., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 

626, 631-32 (9th Cir. 1987). Although the party opposing summary judgment is entitled to the 

benefit of all reasonable inferences, "inferences cannot be drawn from thin air; they must be based 

on evidence which, if believed, would be sufficient to support a judgment for the nonmoving party." 

American International Group, 926 F.2d at 836-37. In that regard, "a mere 'scintilla' of evidence 

will not be sufficient to defeat a properly supported motion for summary judgment; rather, the 

nonmoving party must introduce some 'significant probative evidence tending to support the 

complaint.'" Summers v. Teichert & Son, Inc., 127 F.3d 1150, 1152 (gth Cir. 1997). 

II1. DISCUSSION 

Defendant moves for summary judgment on the grounds that the '855 Patent is invalid due 

to the application of the on-sale bar under 35 U.S.C. § 102(b). 35 U.S.C. § 102(b) bars 

patentability when "the invention was.., on sale in this country, more than one year prior to the 

date of the application for patent in the United States." As the Federal Circuit has stated: 

The ultimate determination of whether a patent is invalid under § 102(b) due to 

application of an on-sale bar is a question of law. This ultimate determination is 

based upon underling factual considerations. In order to overcome the presumption 

of validity [of a patent], such underlying facts supporting a determination of invalidity 

must be proven by clear and convincing evidence. 

Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1257 (Fed. Cir. 2001) (internal quotations 

and citations omitted). 

Pursuant to the test established by the Supreme Court in Pfaff v. Wells Electronics, Inc., 

525 U.S. 55 (1998), an invention is subject to the on-sale bar if it was both (1) the subject of a 

commercial sale or offer for sale before the "critical date," and (2) ready for patenting before the 


-A0007-


#:2552 

"critical date." See id at 67. It is undisputed that the "critical date" in this case is March 29, 2001. 

"The first prong of [the Pfaff] test involves a determination of whether a commercial offer for 

sale has occurred, applying traditional contract principles." Allen Engineering Corp. v. Bartell 

Industries, Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002). "It also involves an assessment of whether 

the circumstances surrounding the transaction show that the transaction was not primarily for 

purposes of experimentation." Id. at 1352-53. "While any attempt to use an invention for profit 

would deprive the inventor of his right to a patent, an inventor's use 'by way of experiment' does 

not bar patentability." Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. 

Cir. 2008). In assessing whether a transaction was experimental or commercial in nature, the 

Court considers a number of factors, including: 

(1) the necessity for public testing, (2) the amount of control over the experiment 

retained by the inventor, (3) the nature of the invention, (4) the length of the test 

period, (5) whether a payment was made, (6) whether there was a secrecy 

obligation, (7) whether records of the experiment were kept, (8) who conducted the 

experiment, (9) the degree of commercial exploitation during testing, (10) whether the 

invention reasonably requires evaluation under actual conditions of use, (11) whether 

testing was systematically performed, (12) whether the inventor continually monitored 

the invention during testing, and (13) the nature of contacts made with potential 

customers. 

Allen Engineering Corporation v. Bartell Industries, Inc., 299 F.3d 1336, 1353 (Fed. Cir. 2002). 

These factors are merely instructive. Indeed, depending upon the facts and circumstances of the 

particular case, some of these factors may be dispositive and some of these factors may be 

irrelevant. See Atlanta Attachment Co., 516 F.3d at 1361 ("In Allen Engineering, we simply 

catalogued a set of factors that previous cases had found instructive, and in some cases 

dispositive, for determining commercial offers versus experimental uses. The issue of control is 

dispositive here, therefore we need not review each factor set out there."); Allen Engineering, 299 

F.3d at 1353 ("In assessing experimentation, this court has considered a number of factors, not all 

of which may apply in any particular case."). 

FutureLogic does not dispute that the twenty-four PSA-66-VM printers were sold to Coca- 

Cola, but argues that the sales were experimental and not commercial in nature. The Court 

disagrees and concludes that the undisputed facts establish that FutureLogic's sales were 

commercial and not experimental in nature. 

First and foremost, FutureLogic did not retain control over the printers or testing of the 

printers after the printers were delivered and installed in Coca-Cota's vending machines. "While 

[the Federal Circuit] ha[s] held that control may not be the lodestar test in all cases, [the Federal 

Circuit ha[s] also said that is important, and sometimes dispositive." Atlanta Attachment Co., 516 

F.3d at 1366. The Court concludes that the issue of control is dispositive here, and thus the Court 

need not separately analyze each of the Allen Engineering factors identified above. In this case, it 

was Coca-Cola, and not FutureLogic, that developed and proposed the test criteria for the printers, 

and Coca-Cola, and not FutureLogic, that performed the testing of the printers during the field 

tests. Once the printers were installed, FutureLogic no longer had access to, or control of, the 

printers unless Coca-Cola decided to return them for replacement or repair. Although FutureLogic 


-A0008- 

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#:2553 

made modifications to the printers and coupon data during the field tests, the modifications were 

made at the request and direction of Coca-Cola based on the results of the field testing conducted 

by Coca-Cola. Indeed, it is clear that any experimentation that occurred during the field testing 

was undertaken by Coca-Cola to determine whether the printers would be suitable for Coca-Cola's 

specific purposes. Therefore, the experimental use exception does not apply. See Atlanta 

Attachment Co., 516 F.3d at 1366 ("[E]xperimentation conducted to determine whether the 

invention would suit a particular customer's purposes does not fall within the experimental use 

exception."). 

Although the Court concludes that the Future Logic's lack of control over the printers and 

testing of the printers is dispositive, the Court also concludes that there are additional undisputed 

facts that demonstrate that the sales were commercial, rather than experimental: (1) by January 

21, 1998, over two years prior to the sale and delivery of the twenty-four PSA-66-VM printers to 

Coca-Cola, the claimed invention had already been reduced to practice; (2) in addition to 

"prototype fees," Coca-Cola paid $850 for each printer, and (3) Coca-Cola did not return the 

printers at the end of the field tests. Based on these undisputed facts, coupled with FutureLogic's 

lack of control over the printers and testing of the printers, the Court concludes, as a matter of law, 

that the sales were commercial and not experimental in nature. 

With respect to the second prong of the Pfafftest, an invention is ready for patenting when it 

is reduced to practice before the critical date. Pfaff, 525 U.S. at 67. In this case, it is undisputed 

that the invention was reduced to practice by January 21, 1998, and that 24 PSA-66-VM printers, 

which embodied the claims of the '855 Patent, were sold to Coca-Cola by April 2000. Thus, the 

invention was ready for patenting before the critical date of March 29, 2001. 

Accordingly, because the invention was both the subject of a commercial sale or offer for 

sale before the critical date of March 29, 2001, and ready for patenting before the critical date of 

March 29, 2001, the Court concludes that the '855 Patent is invalid due to the application of the onsale 

bar under 35 U.S.C. § 102(b). 

IV. CONCLUSION 

For the foregoing reasons, Defendant's Motion for Summary Judgment of Invalidity of the 

'855 Patent is GRANTED. In light of this Order, the Court's Order Denying FutureLogic, Inc.'s 

Motion for Summary Judgment of Infringement of U.S. Patent No. 7,594,855, and the Court's 

Order Denying Nanoptix, Inc,'s Motion for Leave to File Amended Answer with Inequitable Conduct 

Counterclaim and Defense, the Court concludes that all of the claims in this action have now been 

resolved. Accordingly, the parties are ordered to meet and confer and prepare a joint proposed 

Judgment which is consistent with the Court's Orders. The parties shall lodge the joint proposed 

Judgment with the Court on or before November 14, 2011. In the unlikely event that counsel are 

unable to agree upon a joint proposed Judgment, the parties shall each submit separate versions 

of a proposed Judgment along with a declaration outlining their objections to the opposing party's 

version no later than November 14, 2011. 

IT IS SO ORDERED. 

Page 7 of 7 Initials of Deputy Clerk st" 

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Case No. 

Title: 

PRESENT: 

Case 2:10-cv-07678-JFW-DTB Document 120 Filed 11102111 Page 1 of 1 Page ID 

#:2546 




FutureLogic, Inc.-v-Nanoptix, Inc. 


Date: 


Shannon Reilly None Present 



None 

PRIORITY SEND 

November 2, 2011 


None 

PROCEEDINGS (IN CHAMBERS): ORDER DENYING FUTURELOGIC, INC.'S MOTION 

FOR SUMMARY JUDGMENT OF INFRINGEMENT OF 

U.S. PATENT NO. 7,594,855 

[filed 10/7/2011; Docket No. 69] 

On October 7, 2011, Plaintiff FutureLogic, Inc. ("Plaintiff') filed a Motion for Summary 

Judgment of Infringement of U.S. Patent No. 7,594,855. On October 17, 2011, Defendant 

Nanoptix, Inc. ("Defendant") filed its Opposition. On October 24, 2011, Plaintiff filed a Reply. 

Pursuant to Rule 78 of the Federal Rules of Civil Procedure and Local Rule 7-15, the Court finds 

that this matter is appropriate for decision without oral argument. The hearing calendared for 

November 7, 2011 is hereby vacated and the matter taken off calendar. After considering the 

moving, opposing, and reply papers and the arguments therein, the Court rules as follows: 

In light of the Court's Order Granting Defendant's Motion for Summary Judgment of 

Invalidity of the '855 Patent, filed on November 2,2011, Plaintiffs Motion for Summary Judgment 

of Infringement of U.S. Patent No. 7,594,855 is DENIED. 


-A0010-

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Case No. 

Title: 

PRESENT: 


#:3010 




Futurelogic, Inc.-v-Nanoptix, Inc. 



Sandy Eagle None Present 



None 

PRIORITY SEND 

Date: December 27, 2011 


None 

PROCEEDINGS (IN CHAMBERS): ORDER DENYING NANOPTIX, INC.'S MOTION FOR 

ATTORNEYS' FEES [filed 11/29/2011; Docket No. 127] 

On November 29, 2011, Defendant Nanoptix, Inc. ("Nanoptix") filed a Motion for Attorneys' 

Fees. On December 19, 2011, Plaintiff FutureLogic, Inc. ("FutureLogic") filed its Opposition. On 

December 23, 2011, Nanoptix filed a Reply. Pursuant to Rule 78 of the Federal Rules of Civil 

Procedure and Local Rule 7-15, the Court finds that this matter is appropriate for decision without 

oral argument. The hearing calendared for January 9, 2012 is hereby vacated and the matter 

taken off calendar. After considering the moving, opposing, and reply papers and the arguments 

therein, the Court rules as follows: 

"A determination whether to award attorney fees under 35 U.S.C. § 285 involves a two step 

process. First, a district court must determine whether the prevailing party has proved by clear and 

convincing evidence, that the case is 'exceptional.'" Forest Laboratories, Inc. v. Abbott 

Laboratories, 339 F.3d 1324, 1327 (Fed. Cir. 2003) (internal citations omitted). "Second, if the 

district court finds the case to be exceptional, it must then determine whether an award of attorney 

fees is appropriate." Id. at 1328. 

"[O]nly a limited universe of circumstances warrant a finding of exceptionality in a patent 

case: 'inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and 

otherwise bad faith litigation; a frivolous suit or willful infringement.'" Wedgetail, Ltd. v. Huddleston 

Deluxe, Inc., 576 F.3d 1302, 1304 (Fed. Cir. 2009) (quoting Epcon Gas Sys., Inc. v. Bauer 

Compressors, Inc., 279 F.3d 1022, 1034 (Fed. Cir. 2002)). Here, Nanoptix contends that this case 

is exceptional because (1) Mark Meyerhofer, inventor of U.S. Patent No. 7,594,855 ("the '855 

Patent") committed inequitable conduct during prosecution of the '855 Patent; and (2) FutureLogic 

filed this action in bad faith to drive Nanoptix out of business. 

Page 1 of 2 Initials of Deputy Clerk se 

-A0011 -


#:3011 

Nanoptix has net met his burden of establishing by clear and convincing evidence that Mr. 

Meyerhofer committed inequitable conduct during prosecution of the '855 Patent or that 

FutureLogic filed this action in bad faith to drive Nanoptix out of business. Accordingly, the Court 

does not find this case exceptional, and even if the case were exceptional, the Court would not 

exercise its discretion to award attorneys' fees. Nanoptix's Motion for Attorneys' Fees is DENIED. 


Page 2 of 2 Initials of Deputy Clerk se 

-A0012- 

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• CM/ECF. California Central District Page 1 of!9 

(DTBX), AP.PEAL, CLOSED,. D!SCOVERy_ M_ADR, PROTORD 

UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIA 

(WeMern Division - Los Angeles) 

CIVIL DOCKET FOR CASE #: 2:10-cv-07678-JFW _.DTB 

Futurelogic Inc v. Nanoptix Ino 

Assigned to: Judg,. John F. Walter 

Referred to: Magistrate Judge David T Bristow 

Casein other court: Federal Circuit Court, 112-01095 

Cause; 35:27i Patent Infringement 

Plaintiff 

Futurelogic Inc represented by 

aCalifornia Corporation 

V, 

Defendant: 

Nanoptix ]nc 

a Canadian Corporation: 

https://ecf.cacd.uscourts.gov]cgi-bin/DktRpt.pi?3979450611253,12-L_452_0-1 

-A0013- 

Date Filed: 10/14/2010 

Date Terminated: 11/15/201t 

Jury Demand: Plaintiff 

Nature of Suk: 830 Patent 

Jurisdiction; ,Federal Question 

Brett ,I Williamson 

O'Meiveny and Myers LLP 

6 i 0 Newport Ctr Drive 17th FI 

Newport Beach, CA 92660-6429 

949-760-9600 

Fax: 949-823-6994 

Email: bwilliamson@0mm.Com 

A]7ORNEY TO BE NOTICED 

David P Dalke 

Winston & S_awn LLP 

333 S. Grand Avenue 

Los Angeles, CA 90071 

213-6J5-1700 

Fax; 213-615-!750 

Email ::ddalke@omm..com 

TERMINATED: 09/15/20i1 

Mi/:hael L Myers 

OMelveny and Myers LLP 

610 N_wp0rt Center Drive, 17th Fl0or 

Newport Beach, CA 92660 

949-823-7907 

Email: mmyers@omm.com 

,A ITORNEY TOBE NO TICEU 

represented by Michael D Rounds 

Watson Rounds 

5371 Kietzke Lane 

Reno_ NV 89511 

775,-324--4100 

1/12/2012

CM/ECF- CaliforniaCentralDistrict Page2of 19 

Fax:775-333-8171 

Email:mrounds@watsonrounds.com 

LEAD A 7TORNEY 

ATTORNEY TO BE NOTICED 

Seth E Freilich 

Orrick Herrington & Sutcliffe LLP 

777 South Figueroa Street Suite 3200 


213-612-2020 

Fax: 213-612-2499 

Email: sfreilich@orrick.com 

LEAD ATTORNEY 


Adam K Yowell 

Watson Rounds 


Reno, NV 89511 

775-324-4100 

Fax: 775-333-8171 

Email: ayowell@watsonrounds.com 


Chi Cheung 


51 West 52nd Street 

New York, NY 10019 

212-506-5000 

Fax: 212-506-5151 

Email: ccheung@orrick.com 

PRO HAC VICE 


Daniel Miles Cislo 

Cislo and Thomas LLP 

1333 2nd Street Suite 500 

Santa Monica, CA 90401 

310-451-0647 

Fax: 310-394-4477 

Email: dancislo@cislo.com 


Joseph A Calvaruso 



New York, NY 10019-6142 

212-506-5000 

Fax: 212-506-5151 

Email: jcalvamso@orrick.com 

https://ecf.cacd.uscourts.gov/cgi-bin/DktRpt.pl?397945061125312-L 452 0-1 

-A0014- 

1/12/2012 

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CM/ECF - California Central District Page 3 of 19 

Counter Claimant 

Nanoptix Inc 

a Canadian Corporation 

V. 

Counter Defendant 

Futurelogic Inc 

a California Corporation 

represented by 

PRO HAC VICE 


Mark D Nielsen 

Cislo and Thomas LLP 

1333 2nd Street Suite 500 

Santa Monica, CA 90401-4110 

310-451-0647 

Fax: 310-394-4477 

Email: mnielsen@cislo.com 


Michael D Rounds 

(See above for address) 

LEAD A IT ORNEY 


Adam K Yowell 



Chi Cheung 


TERMINATED: 04/01/2011 

PRO HA C VICE 

Daniel Miles Cislo 



Joseph A Calvaruso 


TERMINA TED: 04/01/2011 

PRO HAC VICE 

Mark D Nielsen 



Seth E Freilich 


TERMINA TED: 04/01/2011 

represented by Brett J Williamson 



https://ecf.cacd.uscourts.gov/cgi-bin/DktRpt.pl?397945061125312-L 452 0-1 

-AO015- 

1/12/2012

CM/ECF- CaliforniaCentral.District Page4 of 19 

Date Filed 

10/!4/20!0 

10/14/2010 

10/14/2010 

10/i4/2010 

!0/1.4]2010 

t0/t4/2010 

10118120!0 

!0/!9/20!0 

11/19/2010 

# 

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Z 

3_ 

Docket Text: 

David P Dalke 


TERMINA TED: 09/!5/201 ! 

Michael L Myers 



COMPL_T against Defendant Nanoptix Inc. Case assigned to Judge John 

F, walter for all further proceedings. Discoveryreferred to Magistrate Judge 

David T- Bristow:(Filing fee $ 350 PAID,) Jury Demanded., fi|edby P!aintiff 

Futurelogic Inc. (et) (ds). (Entered: 10/14/201,0) 

21, DAY Sunimons ISsued:re Complaint:- (DiscOvery)1 as tO Defendant 

Nanoptix Inc. (et)(Entered: 10/14/2010) 

CERTIFICATION AND NOTICE of Interested Parties :filed by Plaintiff 

Future!ogle Inc.: (et) (ds),. _ntered; 10/14/2010) 

CORPORATE DISCLOSURE STATEMENT filed by PlaintiffFuturelogic 

Inc. (et)(ds). (Entered_ 10/lZl/2010) 

4 NOTICE TO PARTIES OF ADR PROGRAM filed.(et) (Entered: 

10_/14/2010) 

5_ REPORT .ON THE FILING OF AN ACTION Regarding'a.Patent or a 

Trademark (Initial N0tifieafiofi)filed by Futurelogic Inc. (et)(Fmtered: 

10/14/2010) 

_6 STANDING ORDER by Judge' John F. Walter: RE_ THIS ORDER 

CAREFULLY_ IT CONTRO_LS THE CASE, AND DIFFERS IN SOME 

RESPECTS FROM THE LOCAL RULES; Memoranda of Points and 

Authorities in support of or in Opposition tO motions shall not exceed 25 

pages; replies shall not exceed 12 pages. Counsel are ORDERED to deliver 2 

courtesy Copies of all documents filed electronically in this action to 

Chambers. For each document filed electronically, one courtesy Copy shall be 

m_ked CHAMBERS COPY arid the other shall be marked COURTESY 

COPY. The courtesy copies. Shall be delivered to Chambers no later than 

I0:00 a.m. on the next business day after the document:was elecironically 

filed (see document for further details). (jp) (Entered: 10118/2010) 

7_ DECL_TION of Lead Trial Counsel Brett J Williamson re Compliance 

with_ General Order i0,07 filed byPlaintiff Futurelogie ine; 0Niliiamson, 

Brett) (Entered: i0/i,9/20i0) 

PROOF OF SERVICE Executed by PlaintiffFuiurelogie Inc, upon Defen'dant 

Nanoptix Inc served on 11t i0/2010, answer due 1:2/1/2010; Service_ of the 

Summ0ns.and Complaint were executed upon Daniel Vienneau, President in 

compliance with_Federa! Rules of Civil Procedure by method of service not 

http S://ecf. cacd.u scourts: gov]cg_-b] n/DktRpt, pi? 39794506 ! 1253 ! 2 -L_452_0-1 

-A0016- 

1/12/2012' 

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CM/ECF - California Central District .. Page 5 of 19 

1 i/29/2010 9 

!2/01/2010 

12/27/2010 

12127]2010 

12/27/2010 

!2/27/2010 

12/29/2010 

01/04/2011 

01/04/20 i i 

01 t04/2011 

0 i/05/201 i 

01/05/2011 

specified. Original Summons NOT returned. (Williamson, Brett) (Entered: 

11/19/2010) 

NOTICE of Change of Attorney Information for attorneyDavid P Dalke 

counsel for PlaintiffFuturelogic Inc: Adding David P. Dalke as attorney as 

Counsel of record £oriFuturel0gic, Inc. for the reasOn indicated in the G-06 

Notice. Filedby pliantiffFuturelogic, Inc. (Dalke, David) (Entered:: 

i 1/29/2010) 

1___00FIRST :STIPULATION Extending Time to Answer the. complaint as to 

Nanoptix Inc answer nowdue 12/31/2010, filed by plaintiffFutureiog{c Inc, 

(Dalke, David) (Entered; 12/01/2010) 

1 lm NOTICE of Manual Filing filed by Defendant Nan0ptix Inc of Nanoptix, 

Inc.'s Answer, Affirmative Defenses, and Counterclaims. (Freilich, Seth) 

(Entered: 12/27/2010) 

12 NOTICE of Related Case(s)filed by Defendant Nanoptix Inc. (Defen&Tnt is 

not aware of any related action) (Freiiich, Seth) (Entered: i2]2"7]2010) 

13___ Notibe of Interested Patties filed by DefendantNanoptix Inc, identifyingl 

_PlaintiffFuturelogie, Inc. and Defendant Nanoptix, Inc:. (Freilich, Seth) 

(Entered: 12/27/2010) 

1_44 ANSWER to Complaint - (Discovery), Complaint - (Discovery) !, 

COUNTERCLAIM against Futurelogic [nc filed by defendant Nanoptix Inc_ 

(Ic) (kbr). (Entered: i2/28/20i0) 

i6 

17 

i,9 

MINUTE ORDER IN CHAMBERS by Judge John F. Walter. Counsel are 

hereby notified that a Scheduling Conferencehas been set for February 14, 

2011. at 8:30 a.m. Lead Trial Counsel shall attend all proceedings before this 

Court, including the Scheduling Conference. Counsel. are directed to comply 

with Ru!e 26 of the Federal Rules of Civil Procedure and-L0cai Rule 26-1 in a 

timely fashion and to file aJNnt Report and a ADR Program Questionnaire, 

on or before January 31, 20!1, (khr) (Entered; 12/29/2010) 

APPLICATION for attorney JosephA. Calvaruso to Appear ProHac Vice 

(PHV Fee ,of $275 receipt number 0973-8020688 paid.) filed by Defendant 

Nanoptix Inc. (Attachments: # 1 Exhibit A, # 2 Certificate of Good Standing, 

# 3 Proposed Order)(Freilich, Seth)(Entered: 01/04/2011) 

APPLICATION for attorney Chi Cheung:to Appear Pro Hac Vice(PHV Fee 

of $275 receipt number 0973-8020702 paid.)filed by Defendant Nanopfix 

inc. (Attachments: # i Certificate of Good Standing, # 2 Proposed Order) 

('FreiliCh, Seth) (Entered: 01/04/2011) 

DECLARATION of Iosepk A. Cabamso :re Complicmce w_th. General Order 

07-08 filed by Defendant Nanoptix: Inc. (Freilich, Seth) (Entered: 01/04/2011) 

ORDER by Judge Joh n F. Walter: granting 16 Application to Appear Pro Hac 

Vice by Attorney Joseph A, Calvaruso on behalf of Defendant Nanopitx; Inc, 

designating SethE FreiliCti as local Counsel. (lt) (Entered: 01/05/20ii) 

ORDER by Judge-John F. Walter: granting 17 Application to Appear Pro Hac 

https://ecf caed.uscourts..gov/cgi'bin/DktRpt.pl?397945061125312-L_452_0-! 

-A0017- 

1/12/2012

CM/ECF- CaliforniaCentral.District Page6of 19 

0i/2i72011 21m 

01/31'/201! 22 

0 i./3 i'/20 i i 23m 

02/02/2011 2__4_4ORDER/REFE_ 

to ADR Program by Judge John F.. Walter,, ordering 

caseto a private mediator by 9/1/11. (se) (Entered: 92/02/2.011) 

02/02/20 i i 25_ 

02/02/2011 26 

03/22]20 i i 27 

03/31/2011 28 

04/01/20 i 1 29 

04104/20-I 1 30 

04/0412011 31 

04ii i:120i i 3_2 

04i121201 ! 33 

Vice by Attorney Chi, Cheung on behalfof Defendant Nanopitx, Inc., 

designating Seth E. Freilich as local counsel. (It) (Entered: 01/05/2011) 

REPLY filed by Plaintiff Futurelogic Inc, Counter Defendant'Futurelogic inc 

to Answer to Complaint (Discovery), Counterclaim 14 (Dalke, David) 

(Entered5 01/21/201i) 

JOINT ADR PROGRAM QUESTIONNAIRE. filed by.Plaintiff Futurelogic 

Inc (Dalk%. David).(Entered 0113 !]20 !1) 

JOINT REPORT Rule 26(0 Discovery Plan / and:the Court's Order setling 

Scheduling Conference ; estimated length oftrial 8 days, filed byPlaintiff 

Futurelogie Inc.. (Dalke, David) (Entered: 01/31/2011) 

_TE ORDER INCHAMBERS by Judge John/F. Walter. The 

Scheduling CoiaferenCe currently on Calendar £or February 14, 20ii at 8:30 

a.m. is hereby vacated and the matter taken off Calendar. Any unserved DOE 

defendants are dismissed at this time. (kbr) (Entered: 02/02/2011) 

SCHEDULING AND CASE MANAGEMENT ORDER by Judge John F: 

Walter Final. Pretrial Conference set for 12/16/2011 at 10:00 AM. Jury Trial 

set for 1/10/2012 at 8:30 AM. (kbr) (Entered: 02/02/2011) 

Proof OF SERVICE filed by.Defendant:Nanopfix inc; served on'March 22, 

2011. (Freilich, Seth) (Entered: 03/22/2011) 

REQUEST to Substitute attorney Michael D, Rounds ]n place of attorney 

ORRICK_ HERRINGTON & SUTCLIFFE LLP filed by defendant.Nanoptix 

Inc. (Attachments? # 1 Declarafion Rounds, #2 Proposed Order)(Rounds, 

Michael) (Entered: 03131/20i 1) 

ORDER by Judge John F. Walter GRANTING Request for Approval of 

Substitution of Att0mey Michael D ROunds. of WATSON ROUNDS for 

Nanoptix Inc in place and stead of ORRICKHERR1NGTON & SUTCLIFFE 

LLP 28. (jp) (Entered: 04/01/2011) 

NOTICE of Appearance filed by aRorney Daniel Miles Cislo on behalfof 

Defendant Nanoptix inc,..Counter Claimant Nanoptix Inc (.Cislo_ Daniel) 

(Entered: 04/04/20:11) 

NOTICE of Appearance filed by attorney Mark D Nielsen on behalf of 

Defendant Nanoptix Inc, Counter Claimant Nanoptix Inc (Nielsen, Mark) 

(Entered: 04/04/201!) 

NOTICE OF LODGING filed /Stipulated Protective Order re Joint Report 

Rule 26(0 Discovery Plan 23 (AttaChments: # 1 Proposed Order)(MyerS, 

Michael) (Entered: 04/i i/201[) 

DECLARATION of MichaetD. Rounds re Compliance. with General Order 

10,07 flledby Defendant Nanoptix In% Counter Claimant Nanopfix. Inc_ 

(Kounds, Michael) (Entered: 04/12/2011) 

https//ecf'.cacd,uscourts,.gov/cgi'-birdDktRpt pi?397945061125312-L 452 0-1 

-A0018- 

1/12/2012' 

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CM/ECF - California Central. District Page 7 of 19 

04/13/2011 MINUTE ORDER IN CHAMBERS by Magistrate :Judge David T Bristow: 

The parties are advised that:the. COurt declines to issue the proposed 

protectlve order to which they have_ stipulated for the foliowing reason: I_ To 

the extentthat proposed 25 seems to contemplate that a party may invoke the 

protective order as a: basis for withholding from produc.tion documents 

otherwise responsive'to a lawfu! stibpoena issuedin another action, proposed 

25 needs tobe revised-to unequivocally state that nothing in the protective 

order shall beconstrued as authorizing: a party to disobey a lawful subpoena 

issued, in atmtheraeti0n. (ad) (Entered: 04/14/2011) 

04/14/2011 

04/18/201 I 

05/05/2011 

05/05/2011 

06/02/2011 

35 NOTICE OF LODGING filed/[Revised] [Proposed] Stipulated Protective 

Order re Joint Report Rule 26(0 Discovery Plan 23 (Attachments: #1 

Revised [Proposed] Stipulated Protective Order)(Myers, Michael)(Emered: 

04/14/201!) 

36 STIPULATED PROTECTIVE ORDERby Magistrate Judge David T 

Bristow (am) (Entered: 04/18/201 i) 

37 MINUTE IN CHAMBERS FILING OF AMENDED SCHEDULING AND 

CASE MANAGEMENT ORDER by Judge John F, Walter: The purpose of 

the Amended Scheduling and Case'Management Order, filed today,is to, 

,notify counsel of:revisions to the Coup's requirements and procedures. The 

Amended Scheduling and Case Management: Order does. not amend,: modify; 

or change any of the pre-tri'al dates or deadlines or the thai date previously 

established bythe Court orrevive or re-open any date or d_adline that has 

expired. To avoid confusion, the Court has intentionally omitted the last page 

of the Amended SCheduling and Case Management Order setting forth the 

.pte_trial dates.and the trial date. 0P) (Entered: 05/05/2011) 

38 AMENDED SCI-IEDUEING; AND CAgE MANAGEMENT ORDER by 

,Judge John F, Walter. (See attached Amended,Order for further information). 

I0P)(Entered.; 05/05/201 i) 

39 

06/02/2011 40 

06/02/2011 

NOTICE OF MOTION AND MOTION to Compel Nanoptix's Production. of 

Documents filed by plaintiffFuturelogic Inc. Motion set for hearing on 

6130/,20!1 at 10:00 AM before Magistrate Judge David TBristow_ 

(Williamson,, Brett) (Entered: 06/02/2011) 

JOINT STIPULATION" to MOTfON m Compel Nanopfix_s Production of 

Documents 39 filed by Plaintiff Futurelogic. Inc, (Attachments: # 1, Exhibit 1 

ito Joint Stipulation, # 2_EXhibit 2 to Joint Stipulation, # _3Exhibit 3 to Joint 

Stipulation, # 4,Exhibit 4 to 3oint Stipulation, # _5Exhibit 5 to Joint 

Stipulatior{ , # 6 Exhibit 6 tOJoint Stipulation, # 27Exhibit 7to Joint 

Stipulation, #'8 Exhibit 8 to Joint Stipulation, # 9 Exhibit 9 toJoint 

Stipulation, #10 Exhibit 10 to Joint Stipulatfon, # I1 Exhibit 11 to Joint 

Stipulation)(Wi!l[amson, Brett) (Entered_ 06t02/2011) 

DECLARATION of Michael L_ Myers in support MOTION to Compel 

Nanoptix_s Production of Documents 39 filed by PlaintiffFuturelogic Inc, 

(AttaChments: # 1 Exhibit A to Myers Declaration, # 2_Exhibit B to Myers 

Declaration, # 3 Exhibit C to Myers Declarafi0n, # 4_Exhibit D to Myers 

Declaration, # 5_Exhibit E to Myers Declaration, # 6 Exhibit F to Myers 

https://ecf, cacd.uscour_s:gov/cgi'-binlDktRpt pi7397945061125312-LJ52__0-1 

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06/02/2011 4..22 

06/02120! 1 43 

06107120 i i 4_ 

06/07/20i I 45_ 

06/07/20 i i 46 

06/15/201 ! 4"/ 

06/15/2011 4__-8 

06/15/20 ! 1 49 

06/28/2011 

08/12/20! 1 

Declaration, # 7/Exhibit' G fo Myers Declaration, # _8Exhibit H to Myers 

Declaration)(Willi'amson, Brett) (Entered: 06/02¢2011) 

DECLARATION of Adam K. Yowell in opposition.to MOTION to Compel 

Nanoptix's Production. of Documents .39 filed by Defendant Nanoptix Inc. 

(Attachments: # ! Exhibit I to Yowell. Declaratiori, # 2 Exhibit_J to Yowell 

Declaration; # _3Exhibit K to Yowell Declaration, #4 Exhibit Lto Yowell 

DeClaration; # 5 Exhibit M to Yowell Declaration)(Will[amson, Brett) 

(Entered: 06/02/2011) 

PROOF OF SERVICE filed by plaintiff Futurelogic In%.re MOTIONto 

Compel Nanopfix's Production of Documents 39 ,:Joint Stipulation re 

Discovery Moil on. 40, Declarati'on (Motion related), Declaration (Motion 

related) 41 served on 6/212011. (Williamson, Brett) (Entered: 06/0_2/20i 1) 

NOTICE OF MOTION AND MOTION to Compel FutureLogic's Discovery 

Responses filed by Defendam Nanoptix Inc. Motion set for hearing on 

6/30'/20111.,at 10:00 .AM before Magistrate Judge. David T Bristow:, (Rounds, 

Michael) (Entered: 06/07/20111) 

JOINT STIPULATION to MOTION to Compel FutureLogic's Discovery 

Responses 4__44 filed by Defendant Nan0pfix.Inc, C0unter Claimant Nanopfix 

Inc. (Attachments: # i Exhibit 1, # 2 Exhibit;2, # 3 Exhibit 3, #4 Exhibit. 4, # 

5 Exhibit 5, # 6 Exhibit 6, # 7_Declaration Yowell, # _8Exhibit A, # _9Exhibit 

B, # 10 Exhibit C; # I1 Exhibit D, # 12 Exhibit E. # 13 Exhibit:F, # 14 

Exhibit G,# 15 Declaration Myers, # 16 Exhibit H, # 17 Exhibit 1)(Rounds, 

Michael) (Entered 06/07/2011) 

MINUTE ORDER IN CHAMBERS by Magistrate JudgeDavid T,Bristow Re 

MOTION to Compel Nanoptix!S Production of Documents 39. Due to the 

Courts unavailability on June 30, 2011, the Court hereby advances the 

heating on the Motion to June 29, 2011 at 10:00am. (ad) (Entered: 

06/08/2011) 

SUPPLEMENT to MOTION to Compel Nan0ptix's Production of Documents 

3_29filed by Defendant Nanopfix In'c, Counter Claimant Nanoptix Inc. 

(Rounds, Michael) (Entered: 06/15/2011) 

SUPPLEMENTto MOTION to Compel FutureLogic's Discovery ResponseS 

44 filed by Defendant Nanoptix Ine, Counter Claimant Nanoptix Inc. 

(Rounds, Michael)(Eritered! 06/15/2011) 

MEMORANDUM in Support of MOT!ONto Compel Nanoptix:s Production 

of Documents 39 / Supplemental Mbmorandum m Support of Futurelogic's 

Motion to Compeifiied by PiaintiffFuturelogic inc, (Myers, Michael) 

(Entered: 06t15/2011) 

50 Notfce of Withdrawal of Moti0t_ to Compel 3.9, Motion to Compel 44.filed. 

by plaintiffFuturelogic Inc. (Myers, Michael): (Entered: 0fi/28/2011) 

51_ STIPULATION for Order to Extend Mediation and Expert Reports Deadlines 

•filed by plaintiffFutureioglc inc_ (A_tachments_ # t Proposed Order) 

(Williamson, Brett) (Entered: 08/12/2011) 

https//eCf.cacd usc0ugs gov/cgi-bin/DktRpt.pi?397945061,!25312-L_452_0-1 

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CM/ECE - California Central. District Page 9 of 19 

08/15/201 1 ORDER by Judge John F. Walter GRANTING Stipulation. to Extend 

Deadlines [51: Last date to conduct settlement conference is 9/13/20! 1 

Opening expert, reports shall be served on September 6, 2011 t and the rebuttal 

reports shall be.served on September 26, 2011. (se) (-Entered; 08/16/201!) 

09/i5/2011 53 NOTICE of Change Of Attorney Information for attorney Brett J Williamson 

counsel for Plaintiff Futurelogic Inc, Counter Defendantl Futurelogic 

Inc.David P. Dalke is no longei" attorney of record for the aforementioned 

party in this case for thereason indicated in the G-06 Notice, Filed by' 

plaintiffFuturelogic, Inc: (Williamson, Brett) (Entered: 09/15/2011) 

09/16/20! 1 

09/28/2011 

09/28/20 i 1 56 

09/28/2011 57 

09/2812011 58 

09/28/2011 59 

!0/03/20!1 60 

10/03/2011 

10/03/20 ! 1 

5_4 Joint Report Regarding Results of Settlement:Conference filled by Plaintiff 

Futurelogic inc (Myers, Michael) (Entered: 09/16/2011) 

55 NOTICE OF MOTION _ MOTION for Summary Judgment as to 

.Invalidity of the '855 Patent filed by Defendant Nanoptix Inc. Motion Set for 

ihearing on. 1.0./31/2011 at 01:30 PM before Judge Iohn F. Walter. 

61 

!(Attachments: .# ! Proposed Order Statement of Decision, # 2 Proposed Order 

Iudgmen0(Rounds, Michael) (Entered:: 09/28/201 !) 

STATEMENT of Uncontroverted Facts and Conclusions of Law in support of 

MOTION for Summary Judgment as tO Invalidity of the '85.5 Patent 55 'filed 

by Defendant Nanopfix InC. (Rounds, Michad) (Entered: 09/28/201 i) 

DECLARATION of Michael D. Rounds in support of MOTION for 

Summary Judgment as to Invalidity 0fthe '855 Patent55 filed by Defendant 

Nanopti'x Inc', (Attachments # ! Exhibit 1, # 2 Exhibit 2, #3 Exhibit 3a, #._ 

Exhibit 3b, @_ E_xhibit 4, #6 Exhibit 5a; # _7Exhibit 5b, #_8 Exhibit 6, # 9 

Exhibit 7, # 1__9_0 Exhibit 8_ # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 1i, # 

14 Exhibit 12, # i5, Exhibit 13, # 16 Exl_ibit 14, # 17 Exhibit i5, # i8 Exhibit 

i6, # j_99Exhibit 17, # 20 Exhibit 18, # 21 Exhibit 19, # 22 Exhibit 20, # 23 

Exhibit 21, #24 Exhibit 22, # 2_._5SulSplement Meyerli0fef Vol 1, # 2_66 

Supplement Meyerhofer V01 2)(Rounds, Michael) (Entered: 09/28/2011) 

SUPPLEMENT to MOTION for Summary Judgment as to Invalidity of the 

'855 .Patent 55 Excerpts of Deposition of Mark Meyerhofer filed by Defendant 

Nanoptix.Inc. (Rounds, Michael) (Entered: 09/28/201.1) 

DECLARATION Of Simmy Ahluwalia in support of MOTION for Summary 

Judgment as to Invalidity of the '855Patent 55 filed by Defendant Nanopfix 

Inc. (Rounds, Michael)(Entered: 09/28/2011) 

NOTICE of Manual Filing filed by Defendant Nanoptix Inc, Counter 

Claimant Nanoptix Inc of Exhibits A-E of DeClaration of Adam Y0well in 

Support 0f Appli'caiton to File Documents Under Seal: (Cislo, Daniel) 

(Entered: i0/03/20'11.) 

APPLICATION to File: D0cuments Under Seal or as REdacted filed b_, 

Defendant, COunter Claimant Nanoptix Inc. (jp) (Entered: 10/05/2011) 

DECLARATION of DANIEL VIE NNEAU in support of Nanoptix Inc's in 

In c's APPLICATION to File Documents Under S_ealor 

as Redacted 61 filed by Defendant Nanoptix Inc, Counter ClaimantNanopfix 

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10/07/20 i 1 

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Inc. (jp) (Eni_eted: !0/05/20! !) 

63 DECLARATION of ADAM YOWELL in support ofNanoptix Inc's 

,APPLICATION to File Documents Under Seal .or as Redacted 61 filed by 

Defendant Nanopfix Inc,. Counter Claimant Nanoptix inc. (jp) (Entered: 

i0/05/201.1) 

64 NOTICE OF MOTION AND First MOTION for%cave to file; Firsf Amended 

Answer.filed by Defendant Nanopfix In c_ Motio n set for hearing on 

H/7/2011 .at:01:30 PM before Judge J0hnF_ Walter. (Attachments_ #1_ 

Declaration Yowell_ # 2_Exhibit A, # 3_Exhibit B, # 4. Proposed Order) 

(Rounds_ Michael)' (Entered_ 10/07/2011) 

6._55 MEMORANDUM in Opposition tOMOTION for SUmmary Judgment as tO 

Invalidity of the '855 Patent 55 filed by Plaintiff Futurelogic Inc, Counter 

Defendant Futurelogic Inc (Attachments: # [ Statement Of Facts And Law; # 

2 Proposed Order Proposed Statement Of Decision,. #3 Declaration Of Breti 

Wil!iamson In Support, # 4 Exhibit 23 - ToB. Williamson Declaration, # 5 

Exhibit 24 _ To B. Willi_amson Declaration, # 6 Exhibit 25 - To B. 

Wil!iamson Declaration; # 7 Exhibit 26 -To B. wiliiamson Declaration,: #_8 

Exhibit 27 - To B. wiliiamson Declaration, # 2 Exhibit 28- To B_ 

Williamson Deciaration,# 1_.9_0 Exhibit 29 - TO B Wflliamson Declaration_ # 

1_! Exhibit 30- To B, Williamson Declaration, # 1_.2.2 Exbibit 31 - ToB. 

Williamson Declaration, # 13 Exhibit 32 - To B. Wiliiamson Declaration, # 

14 Exhibit 33 - To B. Williamson Declaration, # 15 Exhibit 34 - TOB. 

Williamson Declaration., # 1__66 Exhibit 35 - To B. Williamson Declaration, # 

17 Exhibit 36 - To B. Williamson DeclaratiOn, # 118Exhibit 37 - To B. 

Williamson Declaration, # 1_.99Exhibit 38 - To B. Williamson Declaration, # 

20 Exhibit 39 - To B. Williamson Declaration, # 21 Declaration Of E. 

Meyerh0fer In SuppOrt; # 2__22 Declaration Of M. Meyerhofer In' Support, #: 2_._!3 

Declaration OfD. Uhland In Support, # 24 Declaration Of S. Atiluwalia In 

Support)0Nilliamson, Brett) (Entered" 10!07/2011) 

66 Excerpts Of Deposition Of Eric Meyerhofer In Support re: MEMORANDUM 

in Opposition to Motion,,,,, 65 (Williamson, Brett) (Eritered: 10/07/20i 1) 

6__.7Excerpts Of Deposition Of Mark Meyerhofer In Support re: 

MEMORANDUM in Opposition to Motion,,,, 65 (wiiiiamson, Brett) 

(Entered: 10/07/2011) 

68 Excerpts Of Deposition Of D: Stubben re: MEMORANDUM in Opposition to 

Motiofi ..... 65 _illiams0n, Brett) (Efltered! 10/07/20L1) 

.NOTICE OF MOTION AND MOTION for Summa_ Judgment a s to 

_Infringment of_S. PatemNo. 7,5_4,855 filed by plainfiffFuturelogic Inc_ 

MotiOn set for hearing orr 11/7t20I ! at 0I:30 P_M before Judge John F, 

Walter, (Attachments:: # _1MemorandBm of Points and Authorities in Support. 

of Motion for,Summary 'Judgment, # 2_Statement of Uncontroverted Facts 

and _onciusions of Law, # 3_Declaration, of Brett i., Williams0n in Support of 

Motion for Summary Judgment, # 4_Exhibit 1 of Williamson Declaration, # 5 

Exhibit 2 of Williamson DeCl_tration, # 6 Exhibit 3 of William son 

DeclaratiOn, # _7Exhibit 4 of Williamson Declaration, #_8 Exhibit 5 of 

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Williamson Declaration, _9 Exhibit 6 of Williamson Declaration, # 10. 

Exhibit 7 of WilliamsonDeclaration, #'11 Exhibit 8 of WilliamSon 

Declaration', # 12Exhibit9 of W]lfiamson DeClaration, # 13 Exhib{t 10of 

Williamson De'-_aration, # 14 Exhibit 11 ofWilliamson D-_clarati0n_, # 15_ 

Exhibit. 12 of Williamson Declaration, # 16 Exhibit: 13 of Williamson 

Declaration I # 1__77 Exhibi[ 14 of Wiliiamson Declaration, # 18 Exhibit 15 of 

Williamson Declaration, # i9 Exhibit i6 of Williamson Declaration, # 20 

Exhibit 17 of Williamson Declaration,: #21 Exhibit i8 of Williamson. 

Declaration)(Myers, Michael) (Entered: 10/07/20 i 1) 

10/07{2011 7__QDECLARATION' of Stanley A. Hendryx in support,of MOTION for 

Summary Judgment as to InfringrnentofU.S. PatentNo. 7,594_85569filed 

by Plaintiff Futurelogic Inc, Counter Defendant Futurelogi¢ Inc, (Myers_ 

Michael) (Entered: 10/07/2015) 

10/07/2011 7_!.1 *SEALED DOCUMENT - per Order dated 10/25/11111 *Excerpts of 

Deposition of Daniel Viemmau_in Support of re'. MOTIONTorSUmmary 

Judgment as toinfringment of U.S. Patent No. 7,594,85569(Myers, Michael) 

Modified on 10/27/2011 (kbr). (Entered: 10/07/2011) 

10/07/2011 72 Excerpts of Deposition of Jacques LeBlanc in Support of re': MOTION for 

Summary Judgment as to Infringment of U.S. Patent No. _5941855 6_29 

(My ers, Michael) (Entered: 10/07/20 i 1) 

1.0/07/2011 73m Excerpts of Deposition of Jean-Louis DrapeaU in Support of re: MOTION for 

Summary Judgment as to Infringment ofU.S. PatentNo. 7,594,85569 

_lVlyers, Michael)(Entered: 10/07/2011) 

J 0/07i20 J 74 *SEALED DOCUMENT - per Order dated i0/25{1 i i 11 * Excerpts of 

Deposition of _Iichael Vienneau in Support of re: MORON for Summary 

Judgment as to Infringment of U.S..Patent No. 7,594,855_ (Myers, Michael) 

MOdified on 10/27/2011 (kbi-). (Entered." 10/07/2011) 

10/O7/2011 75 Futurelogie's [Proposed] Statement of Decision Granting Fumrelogic's 

Motion for Summary. Judgment of lnfringement 69 re:: MOTION for Summary 

Judgment as to Infringment of U.S. Patent No. 7,594,855 69 (Myers i Michael) 

(Entered; 10/07/.2011) 

10/09/2011 NOTICE OF LODGING filed.re MOTION for Summary Judgment as to 

.Infringment ofU.S. PatentNo. 1594,85569 (Attachrnents:_# 1 [Proposed] 

Statement of Decision Granting FutureLogic!s Motion Por Summai'y 

Judgment oflnfrigement of U.S. Patent No. 7,594,855)(Williamson, Brett) 

(Entered: 10/09/2011) 

10/09/2011 

10/11/2011 

10/17/20!1 

77 NOTICE OF ERRATA filed by PlaiiafiffFuturelogic Inc, correcting 

Miscellaneous Document 75 _illiams0n, Brett) (Entered: | 0/09/2011) 

78 ORDER by Judge John F.. Walter DENIE DNanoptix lnc's ApplicatiOn to File 

Documents Under Seal or as Redacted 61. (jp) (Entered 10/14/2011) 

79 REPLY in support of MOTION for Summary Judgment as !o Invali_dity of the 

_855 ,Patent 55 filed by PlalntiffFuturelogic Inc, (Roonds, Michael) (Entered i 

i0/17/2011) 

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10/17/2011 

i0/17/201I 

10/!7/2011 

10/17/2011 

10/17/2011 

10/17/2011 

DECL_TION of Michael D. Rounds in support of MOTION for 

Summa_ Judgment as to Invalidity of the '855 Patent :55_filed by Defendant 

Nanopd;_ Inc. (Attachments- # I, Exhibit 40_ # 2 Supplement Meyerhofer 

Transcript Excerpts)(Rounds, _chael)(Entered: 10/17/20 ! 1)' 

81__, STATEMENT of Combined Facts in support ofMOTION f0r Sutnmary 

Iudgment as to Invalidity of the '855 Patefit_55 filed by Defendant Nanoptix 

line. _(ROunds,. Michael) (Entered: 10/17/201 i ) 

82 S_PLEME_ to MOTION for Summary Judgment as tO Invalidity of the 

'855 Patent: 55 Excerpls of Deposition of MarkMeyerhofer filed by Defem!ant 

Nan0pfix Nc; (Rounds_ Michaei)(Entered: 10/17/201!) 

83 NOTICE OF ERRATA filed by Defendant Nan0ptix Inc.. correcting Reply 

(Motion,:related) 79 (Kounds_ Michael) (Entered: 10/17/2011) 

84 REPLY in support of MOTION for Summary Judgment.as to Invalidity of the 

'855 Patent 55mfiled by Defendant Nanoptix Inc, (Rounds, _chael) (Entered: 

i0]i,7/20i i). 

85 

i0/17/20i i 8__06 

'10/17/2011 87 

10/17/2011 88 

!01!7/20! 1 89 

10/i 7120.11 

MEMORANDUM:in Opposition to First MOTION for LeaVe to file First 

Amended A/aswer 64 filed by PlaintiffFmurelogic Inc. (Attachmems: # 1 

Declaration &MiChael L. Myers, # 2 Exhibit I to Declaration of Michael L. 

Myers, # 3 Exhibit 2 to Declaration of Michael L. Myers; # 4 Exhibit 3 to 

Deelarati0n of Michael L. Myers, # 5 Proposed Order)(Williamson, Brett) 

(Entered: !0/I7/2011) 

' OPPOSITION to MOTION for Summary Judgment as to Infringment of U.S. 

PatentNo. 7,594_855 69 filed by.Defendant Nanoptix Inc. (Attachments: # 1_ 

Proposed Order)(Rounds, Michael) (Entered: 10/171201:I) 

STATEMENT of Genuine Issues of Material Fact in Opposition to MOTION 

for Summary Judgment as to Infringment of U.S. PatentNo, 7,594,855 69 

filed by Defendant Nanoptix Inc. (Rounds, Michael) (Entered: ! 0/17/2011) 

DECLARATION of Michel Vieanneau in opposition to MO, TION for 

Summary Judgment as to Infringment Of U.S. Patent No. 7,594_855 69 filed 

by Defendant Nanoptix Inc. (Attachments: # 1 Exhibit 19A, # 2Exhibit, 19]3) 

(Rounds, Michael) (Entered: 10/17/2011) 

DECL_TION of Adam: Yowell {n Opposition tO:MOTION for Summary 

Judgment as to Inffingrnent of_S. Patent No. 7,594,85369 filed by 

Defendant Nanoptix Inc, (Attachments: #! Exhibit :20-i, #:_ Exhibit 20-2, 

3LExhibit 21, # 4- Exhibit 22, # 5 EXhibit 23, # 6 Exhibit 24, # 7 Exhibit 25, # 

8_Exhibit 26A, # 9 Exhibit 26B, # iOExhibit 26C,. # 11 Exhibit 26D, # 12 

EXhibit 26E, # 13 Exhibit 26F, # 14 Exhibit 26G, # 15 Exhibit 26H, # l 6m 

Exhibit 26I, # 17 Exhibit,27, # i8 EXhibit 28, # 19:Supplement D Vienneau 

Depo ExcerptS, # :20 SupplementlM Vienneau Dep0 EXCerpts, #21 

Supplement Roman, #_22 Supplement Meyerhofe0(Rounds,. Michael) 

(Entered 10/17/2011) 

Objection in :0ppgsRion re: MOTION for Summary Jiadgment as to 

Infringment of U.S. PatentNo. 7,594,855 69Objections to Evidence filed by 

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CM/ECF - California Central District Page 13 of 19 

Defendant Nanoptix Inc. (Rounds, Michael) (Entered: 10/17/20.1.1) 

10/t7/20i 1 9_[i SUPPLEMENTto MOTION for .Summary Judgment as to Infringment of 

U.S. Patent No. 7,594,855 69Excerpts of D. Vienneau's Deposition filed by 

Defendant Nanoptix Inc. (Rounds, Michael) (Entered: 10/17/20i l) 

10/17/2011 92 

SUPPLEMENT to MOTION for Summary Judgment as to Infringrnent of 

U.S. Patent No: 7,594_855 69Excerpts ofM. Vienneau's Deposiiionfiled by 

Defendant. Nanoptix Inc. (Rounds, Michael) (Entered: 10/17/2011) 

1O/17/20 11 9__33 SUPPLEMENT to MOTION for Summary Judgment as to Inffingment of 

US. Patent No: 7,594,855 6__99 Excerpts of Roman.'s Deposition filed by 

Defeiadant Nanoptix Inc ._(ROunds, Michael) (Entered: 10/17/2011) 

10/17/2011 94 SUPPLEMENT to MOTION for Summary Judgment as to Infringment of 

U.S. patent No: 7 594 855 6__29 Excerpts of Meyerhofer's Deposition filed by 

Defendant Nanoptix, Inc. (Rounds, Michael) (Entered: !0/17/2011) 

i0/19/20 i 1 95 NOTICE of Manual Filing filed by Plaintiff Futurelogic Inc of FuturelogiC, 

Inc.'s Application to File Documents Under. Seal or as Redacted; (Proposed) 

Order Granting Futarelogic's Application to File Under Seal oras Redacted; 

Exhibits A-E to DeClaration of Michael L. Myers In .Support Of Futurelog[c, 

InC.'s Application t0:File DocUments Under Seal or as Re&/cted (Williamson, 

Brett) (Entered: 1.0/19/201!) 

10/i9/2011 96 DECLARATION0f Michael L. Myers re Notice of Manual Filing (G-92), 

Notice of Manual Filing (G-92) 95/Declaration of Michael L. Myersln 

Support Of Futureloglc, lnc. 's Application to File Documents Under Seal or 

as Redacted filed by PlaintiffFuturelogic Inc. (Attachments! # l_Exhibits A 

through E (Filed Uiider Seal))(Willi amson, Brett) (Entered: 10/.19/2011) 

10/19/20 ! 1 97 DECLARATION" ofW. Jon Huntley re Notice of Manual Filing (G,92), 

Notice of Manual Filing (G-92) 95 filed by Plaintiff Futureiogic Inc. 

(Wilfiamson, Brett) (Entered: 10/19/2011) 

10/19/201 1 i i____00APPLICATION tO.File Documents Under Seal or as Redacted, filed bY 

Plaintiff Futurelogic Inc. Lodged Proposed Order: (kbr) (Entered:. 

L0/24/2011) 

10/21/2011 98 NOTICE of Manuai Filing filed by Defendant Nanopfix Inc s Counter 

C1aimant Nan0ptix Inc of Renewed Application to File Documents Under 

Seal or as Redacted: (Nielsen, Mark) (Entered:: 10/2i/20i 1) 

i0/21/2011 99 NOTICE of Manual Filitlg filed by' Defendant Nanopti× Inc, Couiater 

Claimant Nanoptix Inc of Renewed Application to File Documents Under 

Seal or as Redacted. (Nielsen, Mark) (Entere& 10/21/2011) 

10/21/2011 100 APPLICATION for Order for Documents Under Seal 7/, 74 filed by 

Plaintlff:Futurelogic Inc. (Attachments: #1_Proposed 0rder)Myers, Michael) 

(Entered: i0/2.i/2011) 

10/21/2011 112 APPLICATION to File documents Under' Seal or as Redacted filed by 

defendanffcoUnterclaimant Nan0ptix Inc. Lodged,proposed order. (se) 

(Entered: I0/25/2011) 

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l 0/21/2011 DECLARATIONof DanielVienneauin supportof APPLICATIONtoFile 

Under Seal :1.12filed by Defendant Nanoptix Inc;. COunter Claimant Nanoptix 

Inc_ (se) (Entered _10/25/201 !) 

10/21/2011 1i4 

!o¢21/2o! 1 115 

DECLARATION of.Adam Yowell in Support ofNanoptix Inc.'s Renewed 

Application tO File Documents Under Seal or as Redacted 1] 2, filed by 

Defendant Nanoptix; Inc. (Attachments: # 1 Part 2, # 2 Part 3, # 3_Part 4)(kbr) 

(Entered:: i0/25/201,1) 

ORDER by Judge John F. Walter: granting 13 2 Nanopfix_ Inc:'s Application 

to File Under Seal or as:Redacted (se) Modified on 10/27/2011 (se),: (Entered: 

10127120!1) 

10/21/2011 11._..fi6ORDER 

by Judge John F. Walter! grantii_g 110 Ftiturelogids Application to 

i File Under Seal or as Redacted. (se) (Entered: 10/27/2011) 

10/21/20 ! 1 ,11..88 

10/21/2011 I1.__29 SEALED DOCUMENT- Exhibits A-E to Nanoptix, Inc.'s Application to File 

Doctitriems Under Seal and as Redacted. (mat) (Entered: 10/28/291 I) 

10]24120 ! 1 101 

10/24/2011 10...22 Supplemental DepositionExcerpts of Jean-Louis Drapeau filed by Plaintiff 

Futurelogic Inc re: MOTION for Summary Judgment as to !nfringment of 

• US. Patent No: 7 594,8556_ (Williamson, Brett) (Entered 10/24/2011) 

10/24/2011 i 03 

10/24]2011 I 0_..4 

i 0/24/2 011 10_._55Deposition 

E_tcerpts: of KendyI Roman filed by PlairitiffFutui'elo_c Iric re: 

MOTION for Summary Judgment as to Infringment ofU. S. Patent No: 

7,524,855 69 (Williamson, Brett) (Entered: 10/24/201 l) 

10/24/20! 1 !06 

SEALED DOCUMENT=EXHIBITS A-E m Deciarat{on of Michaei L, Myers 

:in Support of Fumrelogjc, Inc.'s Applicafior, to Fiie Documents Under Seal or 

as Redacted, (mat) (Entered; 10/28/20 i 1) 

.REPLY In Support Of MOTION for Summary Judgment as to Infringment of 

US. PatentNo. 7,594_855 69 filed by PlaintiffFuture!ogic:Inc. (Attachments: 

# i Combined Statement of Facts, # .2_Supplemental Declaration of Brett J. 

Wiliiamson In Support Of M0fion for Summary Judgment, # 3 Exhibit 29 to 

Suppiemental Declaration ofBrett J. Williamson, # _4Exhibit 30 to 

SupplementalDeclaration o£ Brett J. Williamson)(Williamson,. Brett) 

(Entered: i0/24/20il) 

Supplemental DepoSition Excerpts ofDaniel Viermeau filed by Plaintiff 

Futurelogic Inc.re: MOTION for Summary Judgment as tO Infringment of 

U.S. PatentNo. 7,594,855 69 (Williamson,Brett) (Entered: 10/24/2011) 

Supplemental Deposition Excerpts ofM_chei Vienneau flied by Plaintiff _, 

Futurelogic l'nc re: MOTION for Summary Judgment as to: Infringmenf of 

US. PatentNo: 7,5_4;855 69 (Wiiliamson, Brett) (Entered: 10/24!201i): 

Suppl ementaiDeP0sifion Excerpts' of David Smbben fii ed by PI aintiff 

Futurelogic inc:re;MOTION for Summary Judgment as to Infringment of 

U.S. Patent No: 7,594,855 6_2_illiamson,Brett) (Entered: i0124/201 i): 

10/24/2011 10__.__7.7 REPLY in support of FirstMOTiON for Leaveto fileFirst Amended Answer 

64 filed by Defendant 

10/2'4/2011) 

Nanoptix Inc. (Rounds, Michael). (Entered: 

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10/24/2011 

10/24/2011 i 0_._99RESPONSE 

filed by PlaintiffFuturelogic Incto Objection/Opposition 

(MOtiori related) 90/PlaintiffFuturdlogic_ Inc. 's ResponSes to Nanoptix's 

10125/2011 111_____ORDER 

ON FUTURELOGIC_ INC,'S APPLICATION TO FILE 

i.DOCUMENTS UNDER SEAL by Judge John F:, WaRer: granting 100 

Application for Order:. (kbr) (Entered: 10/25/2011) 

10/27/201 i l t__,77 

11102i2011 12.____0MINUTES 

(IN CHAMBERS): ORDER by JudgeJol_n F, Walter: denying 69 

Motion for Summary Judgment OF INFRINGEMENT OFU, S.PATENT NO. 

7,594,855. (se) (Entered: 11/02/2011,) 

11/02/2011 12!. 

1110212011 122 

DECLARATION" of Michael D. Rounds in: support of First MOTION for 

Leaveto file First Amended AnsWer 6__44 filed by Defendant Nanoptix Inc. 

(Attachments_ # ! Exhibit C)(Rounds_ Michael) (Entered: 10/24/2011) 

Objections to Evidence (Williamson, Brett) (Entered: i0/24/20i 1) 

MINUTE ORDER 1N CHAMBERS. by JudgeJohn F. Walter continuing 

MOTION for Summary Judgment as to Invalidity of the '85-5 Patent 55 : 

Motion 55 heating continued to 11/7/2011 at 01:30 PM before Judge John F. 

Walter. (se) (Entered: I0/27/2011) 

MINUTES (IN CHAMBERS)_ ORDERby Judge John F. Walter." granting 55 

Motion.f0r Summary ludgment. The:parties shall lodge a j0intlproposed 

Jiadgmentwith the Court on orbefore November !4, 201 L In the unlikely 

event that:counse! are unable to agree upon a-joint proposed Judgment, the 

parties shall each submit separate versions of a proposed Judgment along with. 

a decimation outlining their objections to the opposing portysversion no later 

than November !4, 201 !, (se) (Entered; ] !/02/201 !) 

MINUTES (INCHAMBERS): ORDERby Judge Johfl F. Walter: denying 64 

MOtiOn for Leave to File Amended Answer With Inequitable Conduct 

Counterclaim and Defense. (se)(Entered: 11/02/2011) 

11/1112011 12_.__23NOTICE 

of Submisison of Joint Proposed Final ,judgment filed by Defendant 

Nan0PtiX Inc, (Attachments; # l, Exhibit A)(Rounds_ Michael) (Entered; 

11111/2011) 

11/1512011 12.___44FINAL 

JUDGMENT by Judge John F. Walter. IT IS ORDERED AND 

ADJUDGED that US Patent No. 7,594,855 is invalid under 35 USC section 

102(b); Plaintiffs Complaint and,Defendant's counterclaim are. dismissed 

without prejudice as moot; Plaintiffs Motion for Summary of Infringement of 

the 855 Patent 69 isDENIED; Defendant!s Motion for Leave to File 

Amended Answer 64 is DENIEDi. and Defendant i s entitled t0 costs as the 

prevailing party. (MD JS-6, Case Terminated), (jp) (Entered; H/15/201"1) 

11/23/2011 "l25 NOTICE OF APPEAL to the Federal Circuit filed'by plaintiff Futurelogic 

.Inc. Appeal of Order on Motion for Summary Judgment 120, J_udgment, 

124, Order On MotiOn for Summary Judgment, 121 (Appeal fee of $455 

receipt number 0973-9561348 paid.) (Williamson, Brett) (Entered: 

11/.23/2011) 

1 i/28/2011 IJSCCA Federal Circuit Information Sheet filed as to PlaintiffFuturel0gic inc 

re Notice of Appeal to Federal Circuit Court of Appeals, 12.__55 (car) (Entered: 

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11/28/20 i 1 

! 1/29/2011 2__.__77 1. NOTICE OF MOTION AND MOTION for Attorney Fees filed by Defendant 

Nanoptix Inc..Motion set for hearing on !/9/20112 at 01.:30 PM before Judge 

John F. Walter. (Attachments: # ! l_roposed Order)(Rounds, Michael) 

(Entered; 11/29/201 I) 

1 1/2_)/201i 128 

!!/29/2011 .12.9 

11/29/20ii i30 

11/29/2011 13____1APPLICATION 

to the Clerk to Tax Costs againstPlaintiffFuturelogic Inc. 

filed by Defendant Nanoptix Inc. Application set for hearing, on i2/i3/2011 .a{ 

10:00 AM before Clerk of Court. (Attachments: #i Exhibit A, # 2, Exhibit B, 

11/29/2011 13__22 NOTICE of Manual Filing filed by Defendant Nanopfix Inc, Counter 

Claimant Nanoptix Inc of Nanoptix, Inc.s Application to File Declaration.and 

Motion underRedaction; Declaration of Vienneau in Support of Nanoptix, 

'incus Application toFile Declaration and Motion under Redaction,; [Proposed] 

Order Granting Nanoptix, Inc.s Application to File Declaration and Motion 

under Redaction; Nanoptix!s Notice of Motion and Motion for Attorneys' 

Fees under Seal; Declaration. of Vienneau.in Support of Nan0ptix!s Motion 

for Attorneys' Fees urider Seal. (Nielsen, Mark)(Entered: 11/29/2011) 

'11/29/2011 13____33 NOTICE of Manual Filing filed by Defendant Nanoptix Inc, Counter 

Claimant Nanoptix Inc &Application to File Under Seal, Declaration of 

Vienneau in Support of Application to File Under Seai_"Proposed Order 

Granting Application to File Under Seak. (Nielsen;Mark) (Entered: 

il/29/201D 

11/29/201I 13.9 

11/28/201.1), 

Transmission of Notice of Appeal and Docket Sheet to US Court of Appeals 

re: Notice of Appeal to Federal. Circuit Court' of Appeals, 125 (car) (Entered: 

i 1/28/2011 ) 

DECLARATION of Daniel Vi'enneau in support: of MOTION for Attorney 

Fees '12"/filed by Defendant Nanoptix Inc. (Attachments: # l Exhibit A, # 2, 

Exhibit B, # 32Exhibit C, # 4 Exhibit D, :# 5 Exhibit E)(RoUnds, Michael) 

(Entered! 11/29/2011) 

DECLARATION of Michael D,, Rounds in support of MOTION for Attorney 

Fees 127 filed by Defendant. Nanoptix Inc. (Attachments: # ] Exhibit F, # 2 

Exhibit. G, # _'Exhibit.H, # 4.Exhlbit I, # 5 .Supplement E Meyerhofer Depo 

Excerpts)(Rounds, Michael) (Entered: 1.1/29/2011) 

SUPPLEMENT to MOTIONfor AttOrney Fees 12__!Excerpts of DepositiO,1 of 

EricMeyerhofer filed by Defendant Nanoptixinc. (RoundS, Michael) 

(Entered: ! 1/2912011] 

# 3 Exhibit C, # 4 ExhibitD, # 5_ExhibitE)(Rounds, Michael)(Entered: 

1/29120i 1) 

DECLARATION of Daniel Vienneau in support of Nanotix_s Application to 

File Under Seal i_.22 i or as Redacted filed b27Defendant Nanoptix Inc,: C0imter 

Claimant Nanoptix Inc. (se) (Entered 12/05/201 I) 

1112912011 14____9_0 APPLICATION toFile Declaration and Motion Under Redacti on filed by 

defendant, counter claimantNanoptix'Inc. Lodged Proposed Order, (jp) 

(Entered: ' 12/05/20il) 

https://ecf cacd.uscourts_.gov/cg_-bin/DktRpt pl?3 979450611253.12-L_452_0-1 

-A0028- 

1/12/2012 _ 

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1 i/30/2011 

11/30/2011 

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12/i2/201i 

12/19/2011 

NOTICE OF ERRATA filed by DefendantNanoptix Inc correcting 

MOTION for Attorney Fees 127 (Attachments: .# 1 Exhibit A)(Rounds, 

Michael) (Entered: 11/30/20H) 

1.35 .NOTICE of Manual Filing filed by Defendant Nanoptix Inc of Application to 

Seal and Proposed Order:. (Rounds, Michael) (Entered: 11130/2011) 

13_...66O_ER(by Judge John F. Walter DENYiNGNanoptix, !nc?s Application to 

File Documents. Under Redaction, reErrata 13_.._4 (n0 showing of compelling 

:reason)_, (se) (Entered: 12/01/2011). 

141 ORDER DENIED: Application to Seal i40 by Zludge John F. Walter. (jp) 

(Entered: 12/05/2011) 

:14___44 _ APPLICATION (Unapposed) to Seal filed by defendant/counterclaimant 

Nanoptix Inc. Lodged proposed order, (se) (Entered: 12/08/2011) 

137 NOTICE Filing of Unredacted Documents. filed by Defendant Nanoptix inc. 

(Attachmerits: # 1±Exhibit A, # 2 Exhibit B)(Rounds, Michael) 0_ntered_ 

12/02/2011) 

138 BILL OF COSTS Deficiency Notice Filed. The following deficiency was 

noted on the APPLICATION to the Cierk to Tax. Costs againstPlaintiff 

Future!ogic Inc 13_._!1 ; Scheduled for incorrect day of week. Bill of Costs 

beings are held on. ThurMays, Counsel is to re-notice the corrected hearing, 

information., Please see Bill of Costs Handbook. Please consult Bill of Costs 

Handbook locatedon Court's .website:. (jp) (Entered: i2/05¢2011) 

APPLICATION to the Clerk to Tax. Costs against PlainfiffFuturelogic Inc 

filed by Defendant Nanoptix Inc. Application set for hearing on 12/15/201.1 at. 

10:00 AM before Clerk of Court. (Rounds, Michael) (Entered: 12/05/2011) 

143 Futurelogic's F.R,A.P. 10(b)(1)(B) Certificate Regarding Duty tO Order 

Transcript of Proceedings filed by PlaintiffFuturelogic Inc (Williamson, 

Brett) (Entered: i2/07/2011) 

14__ 5OBJECTIONS to APPLICATION to the C1erk to Tax Costs against Plaintiff 

Futurelogic Inc .142 filed by PlaintiffFuturelogic Inc (Williamson, Brett) 

(Entered: 12/08/201.1) 

14___ 6REPLY filed by.Defendant Nanoptix Inc to Objections - non-motion 14_._55 

NANOP77XRE29LY IN SUPPORT OF APPLICATION TO CLERK TO TAX 

COSTS(Rounds, Michael) (Entered: 12/12/2011) 

147 Receipt of Acknowledgement re Notice of appeal to theFederal Circuit 125 

.filed by P!ainfiff Futurelogic ]no, (car) (Entered;. !2/!4/20! 1) 

1148 NOTIFICATION by Circui't Court of Appellate Docket Number 20i 2-1095 

.re Notice of Appeal to Federal Cffcuit Court of Appeals i25 as to Plaintiff 

Futurel0gic Inc. (dmap) (Entered: i2/i4/20111) 

NOTICE of Manual Filing filed by Plaintiff Futurelogic Inc of Futurelogic, 

Inc,'s Application to File Documents as Redacted_ [Proposed] Order on 

Futurelogic, Inc,'s Application to Fiie Documents Under Sea!; Declaration of 

https//ecf cacd uscou_s:gov/cg_-birt/DktRptpl?397945061125312-L_452_0-1 

-A0029- 

1/12/20!2

CM/ECF- CaliforniaCentral.District Page.18 of 19 

I w. Jon Hunfley. (Williamson, Brett) (Entered: 12/19/201.1) 

12/19/20i 1 :15__9.0MEMORANDUM :in Opposition to MOTION for Attorney.Fees l 27 / 

Memorandum of Points. and Authorities in; Opposition to Nanoptix Inc. 's 

Motion for Attorneys'Fees filed by Plaintiff Futurelogic.Inc. (Attachments: # 

1Declaration of Michael L. Myers, # 2 Exhibit 1 to Dedlaration &Myers, # 3_' 

12/i9/20i I 

12/20/2011 

Exhibit 2 toDeclacation of MyerS, # 4 Exhibit 3 to Declaration of Myers, # .5 

Exhibit 4 to Declaration of Myers, # 6 Exhibit 5 to Declaration of Myers, # 7 

Exhibit 6 to Declaration of Myers, #:_8Declaration ofW Jon Huntley, # 2 

Exhibit A to Declarati:0n of Huntley, # 10 Exhibit B to Declaration of 

Huntley, # llExhibit C to Declaration of Huntley, # 12ExhibitD to 

Declaration ofHuntiey _# 1._23 Propose d Order Denying Nanopfix's Motion for 

Aftorneys" Fees)(Wil!iamson, Brett) (Entered: 12]19]201 !) 

15_44 APPLICATION to File Document-as Redacted filed by plaintiff Futurelogic 

Inc. (jp)i (Entered: 12/21/201 I) 

151 MINUTE ORDER 1N C_ERS by: Judge John F.. Walter: re: MOTION 

for' Attorney Fees 127. Defendant's counsel is ordered to show cause in 

writing, no later _an December 23_ 2011 why Nanopfix, Inc's Notice of 

Motion and Motion for Attorney,s Fees ("Motion") set for hearing on January 

9, 20i2 should notbe stricken for failing to comply with ihe provisions &the 

Court's Standing, Order governing the filing of documents under seal. (kbr) 

(Entered: 12/20/2011) 

12/20/2011 i5_ 3 NOTICE OF DOCUMENT DISCREPANCIES AND ORDER. by Judge John 

F. Walter, ORDERING Application for Or,der toFile Under Seal; Declaration 

submitied.by PlainfiffFuturelogie Inc receik, ed on 12/19/2011 tobe filed and 

processed; filed date to be the date the document was stamped Received but 

not Filed with the Clerk. GP)(Entered; 12/21/2011) 

12/20/2011 l 55 ORDER by Judge John F. Walter DENIED AplSlic_ition to File D06unients 

Under Seal 1.5._44,(jp) (Entered: 12/21/20i 1) 

!2/21/201 ! 152 RESPONSE filed by Defendant Nanoptix Incto Minutes of In Chambers 

Order/Directive- no proceeding held_ 151 Nanoptixis Response to Court's 

Order to Show Cause, (Attachments: #1_ Declaration Rounds)(Rounds, 

M_chaei) (Entere& 12/21/20!1) 

12/22/2011 15_ 6 MINUTE IN CHAMBERS DISCHARGE OF ORDER TO SHOW CAUSE: 

by Judge John F. Walter: On 12/20/2011, the Court issued an Order to Show 

Cause why it should not strike defense counsel's Motion for Attorney's Fees. 

Defendant's counsel filed a response, to the Order to Show Cause on 

12121/2011. The Court deems that response satisfactory, and orders the Order 

to Show Cause discharged. (jp) (Entered: 12/22/2011) 

12/22/20 i i i 57 NOTICE OF PUBLIC FILING OF _DACTED DECLARATION OF 

ION _TLEY IN SUPPORT OF FUTURELOGIC'S OPPOSITION TO 

NANOPTIX'S INC?S; MOTIONFORATTOKNEYS' FEES re 

APPLICATION to Seal 154 filed by.PlaintiffFuturelogic Inc. (Attachments: 

# _1Exhibit A to NotiCe)(Myers, Michael) (Entered:' 12/22/2011) 

12/23/20! ! REPLY in support of MOTION for Attorney Fees 12__.27 filed by Defendant 

hftps;]/ecf.cacd.us courts,, gov]cgi -b in/DktRpt, pi? 39794506 ! 125312 -L_452_0-1 

-A0030- 

1/12/2012 

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CM/ECF - California Central District Page: 19 of 19 

Nanoptix Inc. (Attachments: _ ! Declaration Rounds, # 2_Exhibit A)(Rounds, 

Michael) (Entered: 12/23/201 !) 

i 2/27/2011 ¸15__29MINUTES (12'4CHAMBERS) ORDER DENYING Nanoptix Inc's Motion for 

Attorney Fees 127 by Judge JohnF.. Walter: The Court does :not find this case 

exceptional, and even if the case were exceptional, the Court would not 

exercise :its discretion to award attorneys' fees. Nanoptix's Moti_on for _ 

Attorneys Fees is DENIED. (iP) (Eritered: 1'2/27/2011) 

! 2/29/2011 160 NOTICE OF APPEAL to the Federal Circuhfiied by Defendant Nanopfix 

Inc, Appeal of Order on Motion for Attomey Fees, 159 (Appeal fee of $455 

receipt number 0973-9709825 paid,) (Rounds,AVfichael) (Enteredl 

•12/29/2011) 

12/29/2011 I6_I USCCA Federal Circuit Information Sheet filed: as tO Defendant Nanoptix Inc 

.re Notice of Appealto Federal Circui[ Court .of Appeals 160 (car) (Entered: 

12/29/2011) 

12/29/20-11 Transmission of Notice of Appeal and Docket Sheet to US Courtof Appeals 

re: Notice of Appeal to Federal Circuit Court of Appeals 160 (car) (Entered: 

12/29/20i l) 

01/03/2012 162 REPORT ON THE DETERMINATION OF AN ACTION Regarding a 

Patent or Trademark. (Closing), (Attachments: # 1,Final Jiadgmeni) (iP) 

(Entered: 0!/03/20112) 

PACER ore0021 Client 

Login: Code: 

PACER Service Center 

Transaction Receipt 

Ol/12/2012 15:49:o8 

Docket. Search 

Description:: Report Criteria: 

Billable 

Pages: 

15 Cost: 

14496/0291537-00013 

2:10-cv-07678-JFW -DTB 

End date: 1/I212012 

https://ecf.cacd.uscourts,.gov/cgi-bin/DktRptpi?3979450611253.!2-L 452 0-1 

-A0031 - 

1.20 

1/12/2012

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o2)United States Patent 

Meyerhofer 

(54) MF, TIIOI) ANDAPPARATUS I;'OR GAMIN(; 

PROMOTIONAl, PRINTEII 

(753 Inventor: Mark Meyerhofer, LaCanada, CA (US) 

f73) Assignee: l;'utureLogie. Inc.. Glendale. CA (US) 

( * ) Notice: Subject u'_ ally disclaimer, the term oflhis 

(213 Appl. No.: 10/405AI2 

(22) Filed: 31at. 31,2003 

patent is extended or adjusied trader 35 

U.S.C. t54(b) by 765 days. 

(65) Prior Pnhlication l)a¢a 

((0) 

(50 

US 2004/0095604 AI May 20, 2004 

Related U.S. Application Data 

Provisional application No, 60/369,097, filed on M:u:. 

29, 2002. 

Int. CI. 

A63F Ll/00 (2006.013 

A63F 13/08 (2006,0 I) 

GO6F 9/00 (2006.01 ) 

GO6F' 9/02 (2006,013 

.,163F 9/24 (2006,013 

(52) U,S. CI ........................... 463142; 358/l.15; 463/16; 

463/40: 463/1: 463/25: 705/14: 705/1; 700/91 

(58) Field of Ctassitieatlon Search ....... 358/1_15-1.18_ 

358/1.1: 463125. 16. 1, 29, 36, 39-43: 705/14; 

710/I I, 17: 235/375, 381 ; 700/231, 232; 

See application file fi)r complete _arch histo_. 

(56) References Cited 

U.S. P/kTEN°I" DOCUMENTS 

4,723.212 A 2/1988 OffetaL 

(Continued) 

//-.lo4 

221/I, 2, 7-10 

Illlllllilllli I!IUlIlllllll ill!liltIIllililil 

EP 

US007594855B2 

(10) Patent No.: US 7,594,855 B2 

(45) Date of Patent: Sel). 29, 2009 

I:OREIGN E,_I'ENT IN)C;UMENTS 

0173835 A2 3/1!_86 

(Contiauc_.l) 

OTHER PUI3LIC_VI IONS 

Fulur¢logie, In',:,. 'qleavy Duly Dollar Bill Size I)ir,:ct "thermal 

Kiosk [Mnter User's Manual". Copyri_h12000. 

(Contlnuixl) 

Primary Examiner--Twylcr L Haskins 

Assistant Exonlhwr--Chad Dickersoil 

(743 Attorn_?; Agent, or Firm--Firztmlrick. Celia. Harper & 

Scinm 

(57) ABSTIIACT 

A inelhtxl ;rod appar'alus for a gaming promotional prinlcr Ibr 

use v,'ithin a cashless cnablc'd gaming machine are disclosed. 

A gaming promotional printer includes a colrpon databa.',_ 

dc.,cribing a stack o fcoupons that m_._specified using a tem- 

plaie based coupouing printer langl_tge. A coupon is selected 

Ibr creati_m and issued to the player Ntsed on a matrix or 

event-based triggeL's involving E_etors or pamn;telers known 

to the gaming ptx_motio_ml prinier directly or supplied hy 

nmster pronlotional eontreller. Triggers may inc hide tile time 

o f day_ the date or amounl of a cash-out voucher to be issued 

to a player: the duration ofplay on a gaming machine, a player 

classification, d_e amounl of money or credils add_xt 1o a 

N_me. or a random ti'equent 3, of coupon issuance having 

satisfied any or all o fthe aforementioned factors. The gaming 

pmmodorml primer may finlher htelude the abilily to store all 

of Ihe coupons, Irigger conditions, and related inlbmmfion 

resident in the gaming pmmolional printer in a not-volatile 

Ihshkm thus elulbling a host syslem to download n promo- 

tlo_ml environment into 1he gaming promotiolml printer 

which will run pn',molional campaigns on behalf of the host- 

lag system. 

-A0032- 

84 Claims, 9 Drawing Sheets

U,S, I'ATENT DOCUMENTS 

,1,910,672 A 3:1990 Offelal. 

5,075,874 A 12:1991 Stccvcs e_ al. 

5,256,863 A 10! 1993 F_rgm;on cl al. 

5.612,868 A 3/1997 Ofl'elal. 

5.816,918 A 10/i998 KeUyel al. 

5,909,673 A 6¢1999 Gre_my 

5.9432,11 A _' 8¢1999 Nicholselal ............... 700!232 

5.9_:2,997 A 11/1999 St,:,nedal. 

6.OI5,344 A '_ 112000 Kellycl al .................... 463/16 

6.048,269 A 4t2000 Burns et al .................... 463/25 

6,327.044 |31 IZ:200t Shhna 

6,394.907 BI 5:2002 Rowe 

6,4t5.341 BI 7/2002 F_.Sr. cIaL 

6A93,104 BI 12:2002 Cromerelal .............. 358q,15 

6.5 t 1,377 B 1 _" t/2003 Weiss ......................... 463:'25 

6,575,090 B I 6/2003 Vienneau .at al, 

6.612,9.%1 BI 9/2003 Kerr. II ...................... 600:300 

6.620.046 B2 9:2003 Rowe 

6,(_7,437 132 | 1/2003 A_kcrman el al. 

6.862,575 BI * 3/2005 Antiilaelal .................. 705d4 

6.892,182 131 * 5¢2005 t(oweel al .................... 705Jl4 

6.896,618 B2 * 5:2005 l_noy el al ................... 463125 

US 7,594,855 B2 

Page 2 

-A0033- 

6,923,72t 

6,92_,903 

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U.S. Patent Sep. 29, 2009 Sheet 4 of 9 US 7,594,855 B2 

41% 

42 

104 0--_, 

| Promotional il 

L_ 'COntroller - J 

( I Coupon Meotitier 

f 

I Text Field: "Welcome Mr, Smith" 

% 

422"-_. 

........ .0___8___:___ 

F \ 

402 _ _ .... _ F "' /---'_-- 

_Text Field: "Northwoods Casino" _ , Box Field: box around graphic ] 

t r Text Field: 'Lu,z_rjack Buff¢C "] ! Line Field: line ] 

4o4--,.j r - _ C ' :_ 

I I Triggers k'_410 

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FIG, 4 

x/--20O 

Nor thwoods Cas :{n--o_ 

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Lumbcl'jack Buffet ]-J 

[ Save $ 5.00 o,I Admission [ 

[ Welcome Mr, Smith'] 

-A0037.- 

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U,S. Patent Sep. 29, 2009 Sheet 5 of 9 US 7,594,855 B2 

512..I-- - 

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15 15 17 18 192021 

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Coupon Selector _ Player 

Coupon 

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Ptomolion 

506 _-500 _'_511 

FIG. 5 

-A0038- 

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U,S. Patent Sel). 29, 2009 Sheet 6 of 9 US 7,594,855 B2 

ing / I'_ 

Machine / I 

Data and 

_--636 Determine if--] 

Coupon | 

Should Be | 

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MICrilOI) AND AIWAllATUS I;OR GAMING 

PI._OM O'I'IONA I, PI,llNTER 

C P,OSS-REFERENCE TO RI"LNI'ED 

1 

APPI2C:kTION 

qllis application claims tile benefit of U.S. Provisiolml 

Patent Application No. 601369.097. liled Mar. 29, 2002, the 

contents of which are hereby incorpom_ted by ret_rence as if 

fully slated herein. 

BACKGROUND OF THE INVENTION 

This invention relates, generally to gamiug printers and 

more spc_ilically to ganliag printers pcrfomling premotimud 

coupon printing. 

qtte gaming machine rnanut_lcturing industry provides a 

variety of_mling machines for the amusenleat of gmnbling 

players. An exemplao' gaming machine is a slot maehiuc. A 

slot machine is an electromecltaJfical game wherein chzmce or 

tile skill of a player determines tile oateome o flhe game. Slot 

ma,_lines are usually fimnd in casinos or other more intbnnal 

gamirtg ts.tablishalculs. 

Ganling machine nlaatll[lelurers have lnore rt_enlly iutrO- 

duced cashless er, abh:d gaming nmehines to the inarket mid 

these lmve begun to find wide acceptance in file gaming 

indust_. Cashlc,'ss enabled gaming nulchiaes are _ tumled 

because the), can conduct limnlcial exchanges using a mixture 

of traditional currencies and vouchers, "l)'picalJy, a cashless 

elmbled gaming machine has a gaming printer to produce 

vouchers and a bill accepter that supports automatic reading 

of vouchers. "lb coordinate the activities of muhiple cashless 

enabled gaming machines, one or more cashless enahled 

gaming machines may be electronically coupled to a cashless 

enubied g_'_miag machine system that controls the cashless 

opemtion._ era cashl_s enabled gaming nmchine. 

When a player cashes out using a cashless enabled ginning 

machine coupled to a cashless euahh_xl gaming alachine sys- 

tem, the cashless enabl_r,t g,'uning nmehine signals tile systenl 

aad the systenl may detcrminethe type o fpay out presented to 

tile player. Dependingon tile size of the pay out. the casl,Jess 

elmbled gtm:dng nlachine system may cause tin., eafllless 

ambled gaming nlachine to prc_cnt coins in tile tmdilioual 

method of a slot machine, or the cashless enabled gaming 

nlachine system muy caase a gumiag printer in tile cashk'ss 

coabled gaming nutclline to produce a voucher lbr the value o f 

the pay out. The voltchcr may then lx_ redeemed in a variety o f 

ways. For exalnple, the voucher may be redecnled for cash at 

a casbieds cage or used with another cashless enabledganting 

machine. In order to use the voucher in a cashless enabled 

gaming nlachine, the voucher is inserted into _1bill accepter of 

anoth,:r cashless ctmbled galling machine nt a particif_ttiag 

casino and the cashless enabled gaming machine system rec- 

ognizes tile voucher, rcxteems the voucher, and ptae_,_ an 

appropriate amount ofplayiug crc'dits on the cashless enabled 

gaming machiue. 

Over the last two years, cashless enablcxl gaming machines 

have tbund all increasing aeeeplaoce and ase ill tile gaming 

indust O' with players who enjoy the spt._ed of play and ease o f 

transporting their winNugs around the casino and tile casinos 

who have realized si_lifieant labor snviugs in tile form of 

reduced coin hopper reloads ill tile games, and an increase in 

revenue because of the spccd ol7 play. This increasing acccp- 

lance pmefically guarm'nces a wide installed base of net- 

worked games with captive player audiences for issuance of 

coupons and pron'totitmal tickets using generally the same 

US 7,594,855 B2 

eqnipmeut almadyinstallcwJ within u cashless enabled gamiug 

2 

machine system for tile purpC,_ of supporliug ca.shless gam- 

ing vouchers. 

SUMMARY OF THE INVENTION 

In one aspect of rite invemion, a method of printing a 

promotlonal coupon ill a guming envlmmnem includes 

_eiving eoulmn data by a gaming proulotional printer in a 

ta caslfless euabled game from a pronroliorml controller via a 

cemnmnieations network. "File conpou data iucludes a cou- 

pon desert pl ion written in a template de finitio n language. The 

,gaming promotional printer then generates tile coupon using 

variable data lad tile coupcm template in response to a trigger. 

t5 In another aspect of the invenlion, the variuble data is 

received by the ganling promotional printer from tile pn'nno- 

tional coutmller via tile communications network, ill this 

aspect, tile promotional eontlx_ller generates the trigger and 

transmits the trigger to the L_mllng promotional printer via the 

20 eonmlnnications oetwork. 

hi another aspect of the invention, tile coupon data includes 

trit_ger control parameters and the trigger is geilernted by the 

gaming pmmotiaoal printer using tile trigger control param- 

eters and t rlggcr data. "file trlggcr data may include a date. a 

25 lime of day, a freqt_ncy of issuance of the coupon, or a time 

of play by n player ofa ganling maehiue. 

In mlother aspect of the invention, the gmning promotional 

printer is further couplcd to a gaming machine controller mid 

the trigger data is received by the gaming promotional printer 

30 l}om a gaming maclfine controller. 7qle trigger &ata may 

include a player idemiCicr, an mnounl of money in play on a 

Lmming machine, a dnmlion era cnrrelu session oFplay of a 

gaming machine, a cush-in of a player or a cash-out of a 

player. 

35 In _mother aspect of the invention, coupon issnance data is 

stored by the gaming promotional printer and the coupon 

issuance data is transmitted by the gaming promotional 

printer to tile promotional controller via the eomnmnicmions 

network. 

,_0 hi another aspect o fthe invemion, a promotiomd cruttroller 

transmits couptm data to a gtaning pronrotinzml printer via a 

communications net',x'ork with the coupon dam including a 

conpon teulplate. The promotioimt controller transmits vari- 

able data and trigger data to the ginning promotional printer 

45 viatheconunnlfieationsnelwork.tnrospnusetothetransmis- 

glen. tile gaming promotional printer generates a coupon 

using tile coupon |emplale aud the variable &_tu, 

ht mtother a spt_'t of the im,cntion, tile glaring promotional 

primer stores, coupon isstmnce data and the promotional con- 

50 troller receives the COUlXm issuance &lla by the promotiomd 

controller from file gaming promotional prinlor via the cam- 

totalitarians network. 

In another aslx.'cl of the invention, a gamiug promotional 

pritller comprises a processor aud a memoO' coupled to the 

55 processor. The memory has stored program instrutaions 

executable by the processor where Ihe program instructions 

include receiving coupon data inchlding a colJl_O template 

t_mt a proulolional eonn'oller via a couununlcat[ons net- 

work. The program insmtctions fc, r the gaolinB promotional 

6o printer aim include instructions for geucmthlg a coupon 

nshtg variable data and the coupun template in respouse to u 

trigger: 

In another aspect of the invenlion, a prontotional tx, ntroller 

includes a prc, cessor and a memo_' coapled to the pnx'essor. 

6s Program insmlctions tbr implementing the features era pro- 

motional controller art. sturtxl in tile memory arm are execut- 

able by tile pmces,_,r, "Hie proga_tm instructions include: 

-A0043- i 

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transmitting coupon data to a garaing promotional printer via 

a eomraunicallOns network whereln the coupon data inch+des 

a coupon template; transmitting variable data to the gaming 

promotional printer via the communications network; and 

US 7,594,855 B2 

transrnilliug trigger data Io the garalng promotional printer s 

whereby the gaming promolioual printer generates a coupon 

using the eotlpotl template and file v'ariablc data in response to 

the trigger data. 

BRIEF t)ESCR IPTION OF THE I)RAWI NGS 

These and other IL_aturcs. aspects, and advautages of the 

present iuvcution will become better undersu_d with regard 

to tile following description, :ippendcd claims, and accompa- 

nying drawings where: 

FIG. I is block diagram illustrating a gaming enviromncm 

employing coupon issuance in aecordance with an exempla_ 

erabt_iraent of the present invenllon; 

lrlG. 2 is a deployment diagrara of a coupon issuing system 

in accordauce with an excmplan,., embodiment of the present 

itwenlion: 

FIG. 3 is an illustration era coupon including logical liekls 

d_cribcd ia a template bascnt prir_ter languz_ge in accordauce 

wilh au excraplary embodimcut of the present invcntiom 

FIG. 4 is a block diagram of coupon templale field tie- 

meres stored partkdly resident in a promotional gaming 

printer and pai'lially supplied by a master promotional con- 

troller at Ihe time of print and issue in t_ecordanee with an 

exemplap,/embodiment of file present inventien: 

FIG. 5 is a block diagram ofml exempk_, coupon "stack" 

;rod logical trigger nmtrix rcsldent in a gaming promotional 

printer in ;_'cordance with an exemplary embodiment of the 

pr cs:cnt invention: 

FIG. 6 is a process flow diagram era contx_n generation 

pmecss in accord,'mcc with an exemplar',' erabodiment of the 

present invemion: 

FIG. 7 is a sequence diagrara of a coupon generaiing pro- 

ecss in aecOr&mec with an exemplaD, eutbodimel)t of the 

presCllt invention; 

FIG. 8 is an nrchitccture dia._'ant o fan exempl_'3.' prorao- 

tioltal gaming printer in accordance ",vilh an exemplar' 

embc, diment of the present invention; and 

FIG. 9 is :el architecture diagram of an exempl_' master 

promotiorml contrnller in accordance with an exemplary 

embodiraent of tile present invention. 

I)E'I)\IIA_D I)ESCRIIrlTION 

P'IG. I is block diagram illustrating a gamiug elwirnnment 

employing c_:,upouing in accordance with an exemplar" 

embodiment of the prc_eut invention. A player 100 uses a 

cashless enabled gan'ting machine 102 to piny a gantbling 

game or game of skill. As the player pklys the game, a master 

prc, raotlonal eoutroller 104 coupled Io one or more cashless 

crumbled gaming nmehines through a coranranicalions net- 

work 106 triggers tile generation o f po.'nnotional coupons 108 

for use by tile player. The promotional cot_pons are generated 

by a promotionul gamiug printer 109 inehtded in a cashless 

etmblcd gaining maehlne. The master proutotional controller 

cau either be u coutrollcr network comrectcd tn one or more 

ginning pmraotional printers, a comroller within _ cashless 

enabled garaiog ulaehiue or gaming promoilratal printer, or 

an intelllgem renting and man:lgement (leviee lbrone ormore 

garaing promotional printers. In one embodiment nfa master 

promotional controller, the master proraoliom'd controller 

directs the pmmotioual aetivlty of the gaming proraollonal 

printers via direcl promotioJml coupon rcqnesls. In unothcr 

crabodiment of a master promotioual conlrolle_ the master 

promntiunal controller uses a cashless cnablc, d ginning 

raaehine's ginning promotiotgd printer to store promotional 

coupou da|abasc_ and Irig_el's. 

4 

Once a pr

enabled gaming machine uses a bill accepter Ibr redemption 

of promotional coupons and acceptance of vouchers or cash. 

5 

In operation, the master promotional controller tixalsmits 

packets of variable &ira or conpoa data describing n promo- 

tional database to tile gaming pn:unolioaal printer. 'lqte con* 

tents of die pmmoffonal _Ntabase include descriptions of n 

phlmlity of pmmminaal eoupons_ cash vouchers, advertise- 

ments or oilier enticements which arc hereinafter eollcot ively 

referred to as "coupons". The Nutting promotional printer 

receives the promotional database and stores tile promotlonal 

database in the gaming promotional printer's local memos. 

qlle gaming promotional printer also stores spcclficatlons 

of how to print the coupons in its local memory, Tbe specifi- 

carious of tile coupons +lre stored _,s templaB2_ written in a 

template bas_t printer language. This +dlows the coupons to 

be pre-defined, tbnnuttt_l, wnd stored in the gaming promo- 

tional printer completely or partially tbr latex recall. 

Upon reception of a trigger data sig_ml from either the 

master promotional controller or th,.,+ game controllt,n'+ the 

gaming promotional prit+ter re feroncos and parses the promo- 

tional ckatabase and couport tcnlplat,,_ to generate and issue 

promotional coupons or tickets printed on paper media, The 

paper media may Ix, lt:_d specifically tbr the purpose of 

generating promotional coupons, or the paper mcdla may be 

used for the purpose of priming pay out vonche_ associated 

with cashl_s gaming. 

FIG. 3 is an illustration ofa conpon including logical fields 

described in a tempkne bns_t printer language in accordance 

with an exelnplary embodimenl of the presenl invention. In 

this example, a coupon may 300 include fi:.ur types of data 

fields: text fields, such astext field 302; baroque fields, such as 

bar'code field 304: graphic fields, sneh as graphic field 306; 

and line/N_x dmv,, fields, such as line/box draw field 308. The 

fields of a coapoa are described using cnupml deser_pfioa 

data included ill an electronic tcmplam that may be stored by 

a gaming promotional printer A template may inchldc a 

pin silty of fields in combination, resulting in a pa sic-up style 

priuted coupon. A plurali W of templates describing dill;_rent 

Wpes of coupons may be stored in a ganling promotional 

printer supporting a rich conpouing en'¢ironmem. 

"llle actual value or data for each of the fields d_._cdbed in 

a coupon template may or may nat be inetudcd in the remplate 

itselt; For exmnple, a template may include a bar'code field lbr 

printing a barcode 310. Howe;,er, the actual value of tile 

bareode is tratlsmhttxl to a gaming promotiol_d printer at the 

time a coupon is generated nsiug the coupon template. In this 

way, a coupon may have fields list iaclode static dma. such as 

graphic 312 in a gmplfic field, or dynamic data. such as the 

name ofa lxmieular p_tron 314 in a text field. In tiffs way 

customized c_t,ut_3n s may Ix" printed by a gaming promotiomd 

priutcr without transferring large amounts of data through a 

commlmicafions network coupling a gaming promotional 

printer to a master promotional controller. 

In add;,fion, data that is used to track usage ofeouptms may 

be includtxl in a coupon. For example, a bareode field era lext 

fiekl may be used to pdut a N=rcode value or text string 

uniqaely ideatil)'ing a coupon. In tiffs was: a gaming provi- 

siotml printer creates an image of a harcode or barcod_. 

clmmcters or marks that may be ream by a cashless enabled 

gaming nlachine bill ucceplor on the Sanle or anodter cashless 

enabled gaming machine, alkr_ving autmnatic acceptance of 

reopens into a cashless euablcd _anlin_ system in a casino or 

auother rclat_xt casino properly. 

A coupon template includes a ph!r_dity of conunand 

strings. Each command string confi_rms to the fi)tlowing syn- 

lax; 

US 7,594,855 B2 

10 

delimiter-:cmd Ltr>t1 

Ildelimete r: contnlen t 

where: 

delinriter_a delimiter cl'mractcr 

=comnumd identifier letter 

6 

[ ... l< prgn> 

t5 Idelimiter 

where: 

=Template I.D. 

=target memory storage_ 

__0 ,.:l dim_da>=Template dinlension on a decline axis in dots. 

_ q'emplate dime nsion in dots in the paper axis. 

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print region. A '2' indicates a print r,.._ion will auto 

incremeni with each coupo!t in a batch. The base value is 

stored in apr data field. A '3' indicates an alice-decre- 

ment print region which will auto-decrentent with each 

coupon ill a batch. The base value is stored in a pr._data 

field. 

-permanently stored data which always appears 

in this print region, This field tx)ntnins stored text if 

requested by emorlng a "2_ in field. 

A fibra_, comnmad is used to manage defined graphics. A 

libra D, command adheres to the lbllowing syntax: 

delimiter< libmD'cmd hr> I 1 ,lucre> I 

t 1 ld tile size> ! obi data delimiter 

where: 

=operation to perfonn: 'A'--.add object, enter 

download mode_ "l)'-_delcte object. 

=targot memory in which Iv place file object being 

downloaded, 

=ol_iocl identification. This i_ theol;ject I.D. byte. 

=menlory usage specifier. [:or loading a 

graphic: size of a graphic file. The fibrtu2,.' command 

header is temliuatcd after this iicld and obj_dam is 

expected immediately following. For deleting graphics: 

'G" is used ill this field. 

=file size indicator. 

obj. data=object daln (flint or graphic) in appropriate lbr- 

mat if ='A'. Formal for graphics: PCX. 

FIG. 4 is a bhx_k diagram o fcoupon template field element 

stored partially resident in a promotional gaming printer and 

parlially snpplied by a master pnnnotional controller at the 

time of print ;rod issue in aecorthmco with aa exemplary 

embodiment of the present invemion. FIG. 4 illustrates how a 

master promotional eonlroller selects a type of coupon and 

transmits particular, such as variable data to be placed in 

fields in tile coupon, tbr eaeh print and issuance event. \'blues 

for tile fields thai make up a coulxm 300 may he divided into 

two gmnps or sets. A resideni _riable &aa sct 401) may be 

stored locally in a gamblg promotional printer. "lt_e resident 

sta of variable data may include variable data _uch as: _riable 

data for a text field containing an idcntifier of a casino 402; 

variable data tbr a baroode field identiJ_'ing a Lvpe of promo- 

finn 404; a template deserlptiml nscd to generate a graphic 

such as box varinbte ckna 406 or line variable data 41t8: or an 

idenlilier or actual variable data lbr a graphic 410. A dynande 

vnriable data set include variable data Ibr fields having _ri- 

able data Ilult are stored in the ganling pronlodonal printer and 

are _wed in a template definition for a particalar coupon. 

Examples of x_riable data in a dynamic ,_,'ariable data sot 

inclnde: text variable data fi_r a player identitier 414: text 

variable data describing a promolion item 416: and bartx_de 

variable _kata 418 for quantifying a value ufa promotion t_r 

priming on the txmpon. 

Both _alriable dala sets may be tr_nlsnli|lcd [l't.nn a nmster 

pnnnotional eoolroller 104 to a gaming promotional printer 

in the, ft_rm of c_mmunication packets. When a gaming pro- 

molional printer receives a variable &ira set. the gaming pro- 

moiional printer stores die v_riabto data _l lbr futnre use. A 

residcnl variable data sol includes variable daia ttmt tony be 

reused for gcnemtlng many coupons: the_elbre, a resident 

variable data set may be stored hi the gamhlg promotiomd 

prlnlcr lbr all extended period of time. In ctlnt lZ, tsl, a dynamic 

variable data set may be used fi)r a short period of time, 

perhaps for even a siugle ge*wration of a single coupon. As 

such, the dyuanfic variable data set and static wariable darn set 

associat_xt in a ta_ul_n may be transmitted to a gaming pro- 

motional printer at difl_rent tim_._. "lb rotain association 

US 7,594,855 B2 

| -A0046- 

bet'.v_n the variable data _ts, parl of tile conmmnic;dion 

8 

pact'el issued by the masrer pannotional conm)ller may 

include a neff, fence 420 to a tcn'tplate d,,,qinifion so that the 

dynamic data in tile communication packet can be combined 

5 422 witll the static field data stored in a gaming promotional 

printer to generate a complelc coupon 200. 

Since it is possible to store all fields used in a coupon withiu 

the g_nning pt'omofional printer's n_emory i a master promo- 

tional controller may issue a complete coupon by simply 

l0 sending a n.,fcrence to a coupon so defined to generate a 

coupon in its emlrcly. II is also possible for a master promotlonal 

controller 1o offtoad the entire live eommnuication 

bnrdon by sondiug a complele coupon &tlabasc incloding 

triggers dnrlng ofi:peak times. 

t5 In one embodimenl of a gzuning promotioml printer, a 

gaming pnmtotional printcrls triggered to print coupons from 

the gaming protnotional printer's internal dalabase raider 

direct control era master promotional controller thai triggers 

the issuance of a coupon and conveys any r,crtinent variable 

20 intbrmation associated with the coupon snch as in'emotion 

lype, l:,tce :_alue of the coupon, date of expiration and the like. 

FIG. 5 is a block diagram of an cxempla D, conpon stack 

and logical trigger lnatrix resident in a gaining promotional 

primer in accordance wifll an exemplary embodiment of the 

25 present ilwention. As previou sly noted0 a canting promotiumd 

printer may print a coupon in response to either internal or 

t.,'xtemal event signals or trigger (kna, To respond to a trigger. 

a canting promotional printer includes a ¢'oupon selector 

logic tn_lule 500 thai aualyzes trigger data 502 :is trigger data 

30 becomes avaik_ble and determines which eonpons should be 

printed in resprmso to the trigger dala. Coupons, such as 

coupons 504,506. and 508. are stored in a coupon database 

510 as a stuck. The stack of coupons are a plumliD, of pre- 

dellned eoupnns tlmt can generate a cnnpon 511 anytime a set 

35 of trigger conditions to which a eouptm is associared is sat- 

islied. "l'h,._e trlggcr conditions can operate independcmly or 

in Iogleal combination. 

Exemplary logical trigger data utilized in a gamhtg promo- 

tional printer for initiating generation of coupons includes: 

•_0 date 5t 2. time of day 514, li'equcncy ofissoancc o fa txfftien- 

lar c_ulYan 516, time nfp/ay 524, and gameissued parameters 

526 to the printer such as player idcntilication, amount of 

money in place, dnration of the entreat session of play and the 

like. By utilizing the illnstmted trlggt_" matrix, it is possible 

45 Ibr a galniug promotional printer to issne coupons without 

any illformation provided by an master pmmotlonal comrof 

ler al the time ofn cilsh-out or cash-in by a player. 

lit one gaming prontotional printer in accordance with ml 

exemplary embodiment of the invention, die gaming proton- 

5o tionM printer receives from a master promotional conlrt_ller a 

coupon triter database therehy enabling the gaming prnmo- 

tional pri,'der to sol f,-manage its couponing activity. The eou- 

pou trigger database may include diflk_rent types of trigger 

control part meters incladittg: triggering a coupon generation 

55 anytime a cash out voucher is printed; gcnemtlng a coupon 

whenever a voucher i_._rgreater than. eqaa| to, or loss _han a 

speciiied amount of money is issued; genermlng a coupolx 

bas_,xt on an identity of a player: generating a coupon ba_d on 

a category or classification era player related to tkcq uenc 5, of 

_'o play or money volume; generating a coot×'m based on the 

durafion of play of the gaming machine by a player: and 

generating a conpon anytime a player adds money or crndits 

to n game in an amount greater than, equal to, or less tlxm a 

specificd amonnt, 

63 In another aspect of the iuvention, a component of the 

gaming promotional printer's internal database includt_ a set 

of control parameters thai iuslruct the _'uning promoliomd

prit'ltcr to select the type, quantity, arid frequency of coupons 

to create and issne related to any of the triggers listcxl above. 

9 

Thcse ,a-mtrol parameters n_y operate separately or in com- 

bination with each coupon in the database. Paralnt.,ters tirol 

uloy be ustxt inclnde: n total quantity era coupon being issued 

hcfore ttle cotlpo!l is retired from the eonpou database: a 

frcxtueney 518 of issuance o fa couponbased on tile number o f 

occurrences of spccificxl trigger events; a li'equency of issu- 

ance era coupon based on random odds 520. such as one in 

one |lundrod trigger events; a hack'x_p coupon or coupons 

should a particular coupon Ihil to print tbr I,nck ofsatist_qng 

ils specified set of qualifie_; whether or not the coupon is 

issued based on the time the trigger oeennvd: and whether the 

coupon is issnaed based on lhe date the trigger oevurrcxl. 

In one enthodiment of gaming promotionM printer, a real 

rime clock electronic device is inclnded within the gaming 

pn'nnotional printer lot the purposes of supporling lime 

dependcm pnnnolional _ctivity as described above. 

FIG. 6 is a process Clew diagram of a trigger matrix process 

in accordance with one exemplary embodiment of the present 

invention. A trigger matrix process 622 is used by a gaming 

promotioJml priuter to delermine if a coupon should be gen- 

erated attd issncd to a player. The trigger matrix process 

fix:elves (624) variable data li'om a master promotional con- 

Irotler. The trigger matrix proct..'ss determines (628) if the 

variable dam includes a conpon trigger instructing the gaming 

promotional printer to issue a coupon, lfso. the trigger matrix 

process sclec',s (630) an aH',ropriare ct.',upon to issue frc, m a 

coupon database 510. The trigger matrix process then gener- 

ates (632) a eoupon :511 using the selected coupon template. 

In addition, the trigger matrix process may use a purlieu el'the 

variable data received l_)nl the master promolinnat controller 

Io eustonfize the cent, on when tile coupon is generdted. The 

Irigger matrix process may then store (633) coupon issuance 

statistical data (634) lbr later retrievM by the master proton- 

tiered controller. 

A lrigger Inalrix process may atso inltiute issuance of a 

coupon even if the nmsler pronlotional controller does nOl 

transmit a trigE, er to |he gaming promot ionul printer. "lb do so. 

the matrix trigger process _cts (635) trigger control pa_m- 

clefs stored in the prtmmtknml coupon database 510 ttml 

correspond to stored coupon templates iu tile promolional 

coupon datab_._. Tl'te trigger matrix proeess flten gets (638) 

gaming machine and other intemul data 636 and determines 

(640) ifu coupon should be issued using the data lind trigger 

conrtrol parameters. If the Irlgger matrix process de|ermines 

(642) thai a coul×nl should be generatcxl, tile Irigger matrix 

process issues a coupon as previously described, this rime 

seltx:ting a coupon templale using the lrigger control tm_r'anletcrs. 

The gaming promotional printer is a real-time device 

nleauiag thai it continnously proct..'_ses incoming trigger data 

and triggers. As such, the trigger matrix process may be 

conligu_xt as an endless loop as indiealcxl by the starl loop 

644 ,-rod stop loop 646 symbols. 

FIG. 7 is n scNuence diagam era coupon generating pro- 

tess hi accordance with nil exemplary embodimem of the 

present invention. A master promotional eontixflter 104 tams- 

mils coupon or variable data 600 to a gaming promotional 

printer 109. The gaming promotional printer stores (602) the 

coupon dam Ibr later use by the gaming promotional printer in 

printing a coupon. As previously described, tile couptm data 

may include coupon templates; sets of dyuamle and static 

variable data. trigger coutrol paranteters_ and entire proton. 

tional eOllpOn databases. 

A riming promotionnl printer may receive ",_rious triggers 

thai iniliate generation of n coupon tbr a ph_yer 100. The 

US 7,594,855 B2 

master promotional contnlller may transmit a promotional 

10 

trigger (60,1) to die gaming promolioual primer. In response 

to the promotional trigger, tile gaming promotional printer 

generates a coupon 606 Ibr use by the player. The gaming 

5 promotlonal printer tN:n stores (608) statistical data abeu| the 

jllSl geuemted coupon. The ganring promotional priuter Mity 

also receive a gmning nlachine trigger 610 from a gnme 

controller 204 in a cashless enabled gaming machine. In 

response to the gaming machine trigger, the gamlug promo- 

te tional printer gene_,_tes a coupon 610 for u_ hy the player. 

The gnuring promotiomd printer then stores (612) statistical 

data abonl the just genermcd coupon. The gmning promo- 

tiotull printer may alsogcncmte (611) an internal trigger on its 

own such that the gaming promotionul printer generates n 

ts coupon 616 for use by the player. The ganling promotional 

printer then stores (618) statistical dala about the just gencr- 

atcd coupon. 

PeriodieMly, or at the Ix'quest of the master pl'omotlonal 

controller, the gaming promotiomfi printer may transmit the 

2o saved coupon stalistical data to the master promotlonul con- 

troller for analysis and other types o f processlng. The cou pen 

tacking or statistical data may iucludc details such as quan- 

tities o f spc-ci tic types of triggers r¢_¢¢b.'c'd, quantitles of each 

type of coupon issued, aitd tile tial_.'s mad dates when triggers 

25 were received and coupons were issued. 

In a _nning promotionul printer in accordance with _ul 

exemplary embodiment nfthe present invention, the gaming 

promotional prin!cr accepts promotional database loads nnd 

transfers stulisticM data with tile maste_r promolionM _)n|rol- 

3_ ler either throuNl a maiu comnmnieation port ust.xt tbr nor- 

mally signaling pay out vouchers in the game, or through an 

auxilkny pert allowing tile gaming pronmlional printer's pro- 

motional act ivities to be conducted in series or in tmraltel with 

the gaming promotiomd printer's cash-ont voucher priming 

35 limclions within the cashless enabk'd gaming nu_chine. 

FIG, 8 is an architecture diagram of an exemplar' promo- 

tionM gaming printer in accordance w'ith an exemplary 

embodimenl of the present invention. A gaming promuthmnl 

40 primer 109 iucludes u processor 701 operatively coupled viu 

a system bus 702 to a main memo_' 704. The pmc_._sor is also 

coupled to a storage device 708 via a storage c_mtroller 706 

and tile bus. The storage dc'vice includes stored pro m'am 

instructions 724 mid data 726 such us coupon variable data. 

as conpon teutplales, and coupon trigger control parameters. In 

opemtlon, tile program instructions implementing a gaming 

promotional printer are slorcxl on tile storage device until the 

processor retri_,i.$ the program hastrnclions :rod stores them 

in tile main morneD'. [lhe processor then executes the corn- 

s0 puter progntm instructions stored ill the main memory nnd 

operates ou the data stored in the slorage device to implemeut 

the IZ,anlr,._ of a gaming pronlotional printer as deseribtxl 

above. 

"12te processor is further coupled to a printer m_.vhanism 

55 718 lhrrmgb n printer controllt_ 7 | 6 _iu the bns. In opennion, 

the processor exeentes the prognnn instnlclimxs to generate 

prinlermecbanism coulrol signals and lmnsmits these signals 

to tile printer mcclumlsm via the bus and printer controller. In 

response to the printcrmcchauism c_mlrol signals, the printer 

6o mechanisnl prints coupons for use by a player. 

-A0047- 

The processor is Ihrther ctmpled to exlernal input dcwices 

722 by an input device conlrollcr '720 via the bus. Example 

input devices include seusors thnt tile gaming promotioru.d 

printer usc.'s to delt_x.'l proper printing of a cottpotl by the 

65 printer mechanism, coupon printer p_lper detectors, mid rc,nl 

lime clocks. The pt_x:essor receives input device si_lals from 

the input devices via the input device eonn'oller and tile bus 

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and as¢.'s the input device signals to detect the state of the 

gaming protnotioaal printer's environlnent. 

The processor is tilrthcr eouplcua to u network device "/14 

via a netwod,; device conm)ller 7112 ;u:d the bus. The process 

us, es the fl_._twork device to eonllnnlli(.'_,tle wilh other process- 

ing systetns, stfch as n fnasler promotional controller or a 

gaming m_lchine controller as prcvionsly described. 

F'IG. 9 is an archilccturo diagram of an exenlpl8_, prorao- 

tioltal master promotional COnlrallcr it: accordance wlib an 

cxonplary embodiment of the pre_nt invention. A master 

pmmotiotu_l controller includes a processor 901 operatively 

coupled via n system bus 902 to a main menmry 904. The 

processor is also coupled to u slorage dtwiee 91)8 via a storage 

controller 9tt6 and the bus. In opemtinn, program insmterioas 

924 implementing a master proinotional controller are storc_l 

on the storage dcvlce until the processor ret ricves the progs'aro 

instructions m:d steres them in the main memory. The pm- 

cl._sor dten executes Ihe eomptller prog_mt instnleliOns 

stored in the main memo_' to implement the ti:amrcs of a 

master pt,anztotional controller as described above. 

The processor is further couplcxt to a network dc_,,ice 914 

via a network device controller 912 attd the b'tls. The proct_s 

uses the network devic.,: to con'arttn'ticate with othtn" process- 

ing systems, such as a garoiug promotiomd printer or a ,.gam- 

ing machine .controller as previonsly described. 

Aldmugh this invention has been dcscrlbed in certain spe- 

dt;.e emhodimenls, many additional modifications and varia- 

tions would be app:u'cm to dlose s"ldllcd in the art. It is thero- 

Ibre In be understood thal tiffs ilwcniion may be praeliced 

othenvise than as specifically d_._cribc'd. Thus, the present 

embt'v.liment_ of th_ invention should be consklered in all 

reSffCets as illustratlve and not restrictive, the scope of the 

invention to be delennimxl by any chfims supported by this 

application and the claims" cqnlv'alenls mdlcr than the lbro- 

_,:_in_ description. 

What is claimed is: 

I. A promotio_ml printer, comprising: 

a main em'mnunicatioa port tbr coupling the promotional 

primer to a machine eontr,_ller, d'Le main commm'ficution 

port adapted to receive reacher data I'rent tb,,." machine 

conlrolleE 

an anxillary eonmnmieation port, separate fi'om ihe main 

c,.m'tmmficatlon port, for coupliug the pmm_lional 

printer to a promotional controller, the auxiliary. ¢om- 

mnuicatiou pen adaptcxl In recclve coupon data dirt_tly 

from the promotional controller sepamtdy of the 

madfine ec,ntroller; and 

a processor adapted to: 

receive the voucher &_la li'om d:e nrachiae _mnlroller via 

the n'_ain _)mlnunicatlml poll _uld generate a voncher 

using the voucher data: and 

receive the eonpotl data from the prommio_d controller 

via the auxiliary, eommucticalion port and generate a 

coupon using |he coupon data. 

2. TI:e pmmoiiol_l printer of ctaim I, xvhcrelu the pr,._ces- 

sot is lhrthcr adapted to conduct eouponing activities in serial 

will: vouehering activities. 

3. The pronmtimud printer of claim I, wherein the proces- 

sor is further adaptcd to eondud eouponing aetivi'tlc.s in per 

allel whh vouchering activities. 

4. The promotional printer of L wherein: 

the conpon dala inclndes a coupon template; atltd 

the processor is fi_rther adaplcxl 'to gencrale the cca_pon 

using ,,'affable data and the coupon template. 

5_ The promotional printer of claim 4, wherein the proces. 

sot is further adapted to receive the variable data from file 

protnollonal controller via the mixiliary communication per|. 

US 7,594,855 B2 

| -A0048- 

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6. The promotkmal printer of claim 4, wherein the processor 

is further adapted to receis'e the variable data from the 

machine controller via the Imfin communication port. 

7. The promotional printero f claim 4. wherein the pn)ces- 

sor is fiwthcr adaplcxl to gcmerale the coupon in response to a 

trigger: 

g. The promotional prinier ofclalm 7. wherein the procc_ - 

sot is fiwther adapted to receive the trigger from the machine 

controller via the main commtmicaliou port. 

to 9. The pronmtioaal printer o fdaitn 7, wherein the proces- 

sor is fi_rther adapted to receive the trigger th_)n the pronto- 

tinnal c_mtroller via the auxilia_" conunnnieat{on poll. 

I 0. "ltac promotimml printer of claim 7, wherein: 

the coupon cklta inchtdes trigger control parameters; and 

ts the processor is further adapted to: 

receive trigger data; and 

generale the trigger using the trigger control par_uneters 

and the trigger (kila. 

I I. The promotional printer el'clair: 11). wherein the pro- 

20 tosser is lhrther adapted to receive the trlggcr dala from the 

promotiontd conlroller via the auxilia_, eommuaicaikm port. 

12. The promotional printer of claim 10, wherein the pro- 

cessor is further udapted to receive the trigger data from the 

machine controller via the roaiu connmmit_tion port. 

_5 13. The promotional printer o fclaim 11). wherein the trig- 

ger data inclnd,._ a date. 

14. "ll:te promotional priracr of claim I{L xvhcrein the trig- 

ger data includes a tilnc of day. 

15. "llte promotional printer ofclalm I 0, v.,herein the trig- 

30 gerdata inchldes a frcxlnencyofissuaneeoflhecoupon. 

16. The promotional printer of claim I1), wherein lhe trig- 

ger data includes a time of play by a player of a gaming 

machiue controlled by the machine controller. 

17. The pmnmtiomd printer orclaim I 0, whe_qn the trig- 

as gcr data includes a player identifier era player of: gaming 

imlchiue commlkxl by the machiuc controller. 

18. "lllc promotional printer of claim 10. wherein rile trig- 

ger data includes an alnount of ntouc_' in play on a gaming 

machine controlled by the machine conlmner. 

•m 19. The pmmotionnl prituer of claim 10, wherein the trig- 

ger data includes a dnratlon tffa curronl _.ssion of play era 

gaming machlue controlled by the maclfine cx)ntrollcr. 

20. The pnnnotional printer ofetaim 10. wherein the lrig- 

aer data inelndes a cash-in of: player era gaming machine 

45 controlled by the machiue controller. 

21. qlte promotional printer of claim I1), wherein the trig- 

ger daia includes a cash-oat of a player of a canting machine 

controlk_l by the n)uchine cmnroller. 

50 22. "lhe promotioual printer ofclainl In, wherein the trig- 

ger data includes _m expiration date. 

23. The promotioual printer of claim 4, wherein the vari- 

able data includt._ a player identification of a player of a 

gaming machine controlled by the nmchine controller. 

5s 24. The promotional printer of claim 4, wherei_'t the vari- 

able data includes a gaming umehine identification of: gam- 

ing machine contmlh.xl by tile machine controller. 

25. The promotional printer of claim 4, wherein the s,ari- 

able data includc's an expiration date. 

60 26. The prOraodenal printer of claim 4, wherein the vari- 

able &ira inclndt_ a barco(le. 

27. The promotional printer of claim 4, wherein Ihe v_lrl- 

able data includes an image 

2g. The promotional primer of claim 4, wherein ihe vari- 

es able data includes an image era conpon. 

29. The promotional printer of claim 1, wherc'in the coupon 

is a promotional coupon for goods.

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30. Tile promotional printer ofclahn 1, wherein lhe coupon 

is a promoiionat conl_ll for n service. 

31. "llle pmmolioJml printer of claim I, wherein tire 

,toucher is a voncher redeemable in a gaming machine. 

32. The promotional primer of chdm I, wherein the 

voueber is a cash-out voucher lbr a _mling nmchine. 

33. The promotional prinler of claim 4, wherein the vaN- 

able &Ira includes a graphic image. 

34. The promotional prinler ttf claim 4, wherein the ',_ri- 

able data iuctndes a graphic image of a coupon. 

35. The promotional printer of claim I. wherein the pm- 

ccssor is lurther adapted to transmit coupon issuance data to 

tile promotional controller via the auxiliaQ' ctmununicatiou 

port. 

36. A melhod o fprinting coupons by a pnlmotior_t printer 

baying a main eomnnnfieation t-,o_ l_r eonpllng the promo- 

tional printer to a machine controller, the nta[n eommnnica- 

lion poll adapted to receive voucher data lh)m tile machine 

controller lbr prinling n vouchcr_ the melhod comprising: 

receiving coupon data fi'om a promot tonal controller via an 

auxilia_' comnmnieation porl _'paratc from the main 

communication N_rt. tile auxiliary, connnutticaliou port 

adaplcd to rccclve the coupon data directly from the 

promotional controller und sepamlcly of Ille machine 

coutmlle_ and 

priuting a COUl'_'m by tile promotional machine printer 

using the coupon doll. 

37. The method of claim 36, titrther coulprising: 

receiving the voucher data by tile promolional primex from 

a gntrdng machine coutrollcd by the machine controller 

via lhc main communication port- aud 

priufi_N the voucher by the promotional priutcr nslug tile 

voucher &Ira in serial with generating tile coupon. 

3& The method of claim 36. further comprising: 

receiving the voucher data by lhe promotional printer from 

a gaming machine comrolled by ihc machine controller 

via the main comnnmi_aion port: and 

printing th,: v+mchcr by ihu prontotinnal printer using tile 

voucher data in parallel with printing the coupon+ 

39. Tile n'tetbod of claim 36, wherein dte coupon data 

includes a coupon template, the methcJd limber cmnprising 

printiug the coupon using variable data and tile coupon tem- 

plate. 

40. Tile method of claim 39, wherein the variable data is 

rcccive,3 from the promotional controller via the .'nlxiliu_" 

communication port. 

41, The mctluxl of elahn 39, wherein the variable data is 

received li-om a gaming machine cuntrollcd by the machine 

controller via the main communic_fliou porl. 

42. The method of claim 39, further comprising printing 

the coupon in response Io a trigger. 

43. The method of claim 42, filrthcr comprising receiving 

the Mgger li'om a gamiug ntachine controlled by the machine 

controller via the main commnnication port. 

44. The mcttmd ol'dainl 42, further comprising receiviug 

the trigger lhml the promorionat controller via the auxilimT 


45. The mcthtxl of claim 42, wherein the coupon data 

includc_ trigger cuntrol parameters, file melhod furlhercom- 

prising: 

receiving trigger data; nnd 

printlng Ibc trigger using the trigger control pare meiers and 

the trigger daia. 

46. The melhod of claim 45, lb.rther comprising nx'elving 

tile trigger data t_'nn Ihc promotional coulmller via tile aux- 

iliary communication port. 

US 7,594,855 B2 

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47. The method ofchdm 45, limher comprising receiving 

tile trigger data lh)m a g4mling machine controlled by the 

machine eoutroller via the main conmmnication port. 

48. The method of claim 45, wheroiu the trigger &|la 

$ includes a date. 

49. The method of claim 45, wbcrcin the trigger dala 

includes a time of day. 

50. Tire method of claim 45, whercla tile trigger data 

includes a frequency o f issuance of the coupon. 

to 51. The method of claim 45. wherein the trigger data 

includes a time of play by a player of a gaming machine 

controlled by tbe mnchlnc contrcdlcr. 

52. The method of claim 45. wherein the trigger data 

includes a player identifier. 

Is 53. The metbod of claim 45. wherein tile trigger data 

iocladcs an _nnot.ln| Of tnoney iu play on a gaming machine 

controlled by the machine comrolle_; 

54. The method of claim 45. vehcreln the Irigger data 

includes a duration of a current session of play ofa g_unJng 

20 umchinc controllcx'l by the machine coulroller, 

55. The method of claim 45, wheroln the trigger data 

hlclndes a cash-in of a player of a gaming maehlare controlled 

by the machine conlrollct_ 

56. The method of claim 45, wherein the trigger data 

25 includes a cash-,ant of a player of a ganfing machine con. 

trolled by the machine controller. 

57. Tile method of chdm 45, whcrcln the trigger data 

includes an expiration date'. 

58. The melhod of claim 39, wherein the variable data 

3o includes u player identification of a player of a ganting 

nlaehine conln)llcd by lhe machine controller, 

59. The method of claim 39, wherein tile variable data 

includes a ginning machine idenlificalion of a gaming 

nmchine controlk'd by the machine controller, 

35 60. The ntethod of claim 39, wherein Ihe variable data 

includes nn expiration date. 

61. The method of claim 39, wltcroin the ,earinble data 

includes a bareode. 

62. The mcthod of claim 39. wheroin the ",_wiable data 

40 includes an image. 

63. "tile method of claim 39, wherein the variable data 

includes an image ofa eoupmt. 

64. The melhod of ckdm 3a. wherein the conpon is a 

4.5 promotional coupon for guods. 

65. The meth_l of claim 36_ wherein tile coupon is a 

pmmotiomd coupon for a service. 

66. Tile method of claim 36: wherein the voucher is a 

voucher r_mable in a gaming machine. 

.so 67. The method of claim 36, wherein the voucher is a 

cash-out voucher tbr a gaming machine. 

68. The melhod of claim 39, ",vhcrcln the variable dal._l 

includes u graphic image. 

69. The nwllmd of chfim 39, wherein Ihe variable data 

55 includes a graphic image ufa coupon. 

70. The method of claim 36_ furlhcr comprising transmit- 

ling cou[x_n issuance data to the promotional controller via 

tbc auxilia_' conununication port. 

7 I. A promotional printer, contprising: 

_0 voucher data rc-ccMng me, ms ibr r_x'civing voucher data 

from a machine conlrolle_ 

coupon data receiving means, separate from the voucher 

data re'retying me:ms, for receiving coupon data directly 

l_)m a promotional t._ntroller attd separate b' of the 

es madlhae controller:, 

priuting means ['or printing a coupon using tile coupon data 

and lbr printing a vonelter using the vnucher data. 

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72+ llte Wumoliolml printer of claim 7 I, wherein the con. 

pen darn receiving means is an auxilia_" cx3mmnnication pert 

and tile voucher data receiving means is a main communica- 

tion port. 

73+ The promntiotml printer of clnln't 71, titrther comprlsing 

variable data r_civing means l;:_rreceiving variable data 

fi:_rthe coupon, wherein the printing memosu_-s the v_ri_ble 

dam and tile coupon data to print the coupon. 

74. The promolional printer of claim 73, whe_in the ',,'artable 

data receiving means is a nmin communication port, 

75. The promolional printer of claim 73, wherein the _':ari- 

:thle &lta receiving m_ms is an auxiliary communication 

port+ 

76. The pmmotiomll printer of claim 73, v,,hcrein the vari+ 

abledaia is received t_',m z gam'_ng machine centre, tied by file 

m_chthte controller. 

77+ The prontotionnl printer of claim 73. wherein the ,,'_ri. 

able +damis received from the promotionul otmlroller. 

US 7,594,855 B2 

78. The promotional printer of claim 7 I, wherein tile prinlillg 

n'Jealt,; prints tile coupon in response to n trigger, the 

promotional prlnlcr llwthcr comprising trigger receiving 

nteans for receiving the trigger 

5 79+ The promotlonal prht'ier of claim 78, xvhcrc_n the protllotio!ial 

printer receives the trigger fi'um the promotiomd 

controller. 

80, The promotlomd prillicr t_f claim 78. wherein the pron'_olional 

printer _"ceives the trigger ft'om a gaming nlaehinc 

to commlh.-d by tile machine controller. 

81. The promotional prinlcr of claim 71. wherein Iho coupon 

is a promotional conpon tbr goods. 

82. "ll_e promotional printer o fclaim 7 I. whor,.qn the coupon 

is a promelionat coupon lbr a seoAce+ 

t5 83, The p_mntional primer of claim 71, wherein the 

voucher is a voucher redeemable in a gaming nmchine. 

84, The promotiomd printer of claim 71, wherein the 

voucher is a cash-out voucher Ibr a gaming machine. 

-A0050- 

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03226.000105. PATENT APPLICATION 

In re Application of: 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

MARK MEYERHOFER 

Application No.: 10/405,112 

Filed: March 31, 2003 

For: METHOD AND APPARATUS 

FOR A GAMING 

PROMOTIONAL PRINTER 

Commissioner for Patents 

P.O. Box 1450 

Alexandria, VA 22313-1450 

Examiner: C. Dickerson 

Group Art Unit: 2624 

SUPPLEMENTAL DECLARATION UNDER 37 C.F.R. § 1.13 I 

TO ANTEDATE U.S. PATENT APPLICATION 

AND 

PUBLICATION NO. 2002/0107065 

U.S. PATENT APPLICATION PUBLICATION NO. 2002/0077901. 

Sir: 

I, Mark Meyerhofer, declare that: 

1. I reside in La Canada, California. 

2. I am a founder of FutureLogic, Inc. (FutureLogic) and have been 

actively involved in the development of FutureLogic's thermal printers intended for use in 

automated self-service machines, including gaming and vending machines, since 

FutureLogic's inception in 1983. 

-A0051 -

3. I received an undergraduate degree in Engineering from the 

University of California, Los Angeles CUCLA), specializing in electronics and computers. 

4. I am submitting this declaration as the inventor of the invention 

described and claimed in the above-identified patent application. 

5. I am aware that the Office Action dated December 3, 2008 rejected 

all of the pending claims in the above-identified application under 35 U.S.C. § 102(b) 

based on an alleged public use, sale or offer to sale of the invention to which the claims are 

directed. 

6. On or before December 19, 2000, FutureLogic entered into a co- 

development project with a soft drink manufacturer for a promotional couponing system 

for use with vending machines. FutureLogic and the soft drink manufacturer shared the 

costs of the project which resulted in payments to FutureLogic to cover a part of 

FutureLogic's costs. During the project and for a period of time afterward, both 

FutureLogic and the soft drink manufacturer were subject to a mutual non-disclosure 

agreement regarding the project. 

7. As part of FutureLogic's contribution to the project, a number of 

prototype promotional printers having the features of the invention were constructed by 

FutureLogic for experimental use during the period of the project. A representative 

example of the prototype promotional printers as constructed was described in my two 

previous declarations under 37 C.F.R. § 1.13 [ dated February 11, 2008 and August 12, 

2008. 

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8. After being constructed, the prototype promotional printers were 

operated for a period of time by FutureLogic and the soft drink manufacturer as described 

in my previous declarations under 37 CFR § 1.131 dated February 11, 2008 and August 12, 

2008. The purpose of this operational period was to test the operation of the prototype 

promotional printers in vending machines. The test results were used to further refine the 

design of the prototype promotional printers. During this operational period, the prototype 

promotional printers were only accessible by the technical personnel of FutureLogic and 

the soft drink manufacturer and were not accessible by the public. 

9. At the end of the project, a decision was made not to commercialize 

the prototype promotional printer design and none of the prototype promotional printers 

were sold nor were they offered for sale. 

i0. I hereby declare that all statements made herein of my own 

knowledge are true and that all statements made on information and belief are believed to 

be true, and further that these statements were made with the knowledge that willful false 

statements and the like so made are punishable by fine or imprisonment, or both, under 

Section 1001 of Title 18 of the United States Code, and that such willful false statements 

may jeopardize the validity of this application and any patent issuing thereon. 

FCHS W$ 3387422vi 

Date 

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-A0053-

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" i Case2:10-cv-O7678-JFW-DTB Document1 Filed 10,14,10 Page 1 of 32 Pa_O_/' 

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BRETT J. WILLIAMSON (SB, #145235) 

bwilliamson@onun.com 

MICHAEL L. MYERS (S.B. #240652) 

mmyers@orrun.com 

O'MELVENY & MYERS LLI_ " 

610 Newport Center Drive, 17"' Floor 

Newport Beach, CA92660 

Telephone: (949) 760-9600 

Facsimile: (949) 823-6994 

Attorneys for Plaintiff 

FUTUt_ELOGIC, INC. 

FUTURELOGIC, INC., a California 

Corporation, 

go 

UNITED STATES DISTRICT COURTi 


Plaintiff, 

NANOPTIX, INC., a Canadian 

Corporation, 

Defendant. 


:_ ¢%-. 

..-, ;,< 

_ :.-:._,: ..-'- 

:- _ (.,) 

CaJ]INo.CV 10 7678 -:_; 

COMPLAINT FOR PATENT 

INFRINGEMENT 

JURY TRIAL DEMANDED 

Plaintiff FUTURELOGIC, INC. ("FutureLogic"), files this 

Complaint against Defendant NANOPTIX, INC. ("Nanoptix") for infringement of 

United States Patent No, 7,594,855 ("the '855 Patent") under 35 U.S.C. §271. A 

copy of the '855 Patent is attached as Exhibit A. 

PARTIES 

1. Plaintiff FutureLogic is a corporation duly organized and existing 

under the laws of the State of California, having its principal place of business at 

425 E. Colorado Street, Suite 100, Glendale, California. 

-A0054- 

COMPLAEN'T FOR PATENT 

INFRINGEMENT 

0 

/_.b';

Case 2:10-cv-07678-JFW-DTB Document 1 Filed 10/14/10 Page 2 of 32 Page ID #:6 

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2. Nanoptix is a Canadian corporation with a principal place of business 

in 699 Champlain St., Dieppe, New Brunswick, Canada. 

JURISDICTION AND VENUE 

3. This is an action for patent infringement arising under the patent laws 

of the United States, Title 35, United States Code. Accordingly, this Court has 

subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). 

4. This Court has personal jurisdiction over Nanoptix because Nanoptix 

has established minimum contacts with the forum. Nanoptix manufactures and/or 

assembles products that are and have been used, offered for sale, sold, and 

purchased in the state of California. Nanoptix, directly and/or through its 

distribution network, places products within the stream of commerce, which stream 

is directed at the state of California, with the knowledge and/or understanding that 

such products will be sold in the state of California. Therefore, the exercise of 

jurisdiction over Nanoptix would not offend traditional notions of fair play and 

substantial justice. 

5. Further, this Court has personal jurisdiction over Nanoptix under Fed. 

R. Civ. P. 4(k)(2). Nanoptix manufactures and/or assembles products that are and 

have been used, offered for sale, sold, and purchased in the United States. 

Nanoptix, directly and/or through its distribution network, places products within 

the stream of commerce, which stream is directed at the United States as a whole, 

with the knowledge and/or understanding that such products will be sold in the 

United States. Therefore, the exercise of jurisdiction over Nanoptix would not 

offend traditional notions of fair play and substantial justice. 

6. Defendants conduct business in this district, including providing 

products that are used, offered for sale, sold, purchased, and used in this district. 

Venue is therefore proper under 28 U.S.C. §§ 1391 (b), (c), (d) and 1400(b). 

-2- 

-A0055- 

COMPLAINT FOR PATENVF 

INFRINGEMENT 

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PATENT IN SUIT 

7. The '855 Patent, entitled "Method and Apparatus for Gaming 

Promotional Printer," was duly and legally issued by the United States Patent and 

Trademark Office on September 29, 2009 to Mark Meyerhofer, after a full and fair 

examination. 

8. FutureLogic is the assignee of all rights, title, and interest in and to the 

'855 Patent and possesses all rights of recovery under the '855 Patent. 

9. The '855 Patent is valid and enforceable. 

INFRINGEMENT OF U.S. PATENT NO. 7_594_855 

10. Paragraphs [-9 are incorporated by reference as if fully restated herein. 

I I. Nanoptix is making, using, selling, offering for sale, and/or importing 

into this district and elsewhere in the United States printers known as Paycheck 2, 

Paycheck 3, Paycheck 4, Paycheck Inverted, and/or Paycheck Slim (collectively, 

"Accused Products"), directly and/or through representatives and distributors in the 

United States. 

12. Nanoptix has infringed and is currently infringing one or more claims 

of the '855 Patent, by making, using, selling, offering for sale, and/or importing 

into the United States printers including but not limited to the Accused Products 

without FutureLogic's authorization. 

13. FutureLogic is informed and believes, and on that basis alleges, that 

Nanoptix is inducing its distributors to sell, offer for sale, and/or import into this 

district and elsewhere in the United States the Accused Products without 

FutureLogic's authorization. 

14. FutureLogic is informed and believes, and on that basis alleges, that 

Nanoptix is contributing to the infringement of the '855 Patent by others, with the 

direct infringement being accomplished by end users of at least the Accused 

Products. 

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-A0056- 

COMPLAINT FOR PATENrF 

INFRINGEMENT

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15. Nanoptix caused and will continue to cause FutureLogic substantial 

damage and irreparable injury by virtue of its continuing infringement of the '855 

Patent. FutureLogic will suffer further damage and irreparable injury unless and 

until Nanoptix is enjoined by this Court from continuing such infringement. 

16. Nanoptix's infringement of the '855 Patent is exceptional and entitles 

FutureLogic to attorney's fees and costs incurred in prosecuting this action under 

35 U.S.C. §285. 

PRAYER FOR RELIEF 

WHEREFORE, FutureLogic prays for judgment and seeks relief against 

Defendants as follows: 

A. Declaring that Nanoptix infringed the '855 Patent as alleged herein; 

B. Preliminarily and permanently enjoining and restraining Nanoptix, its 

officers, directors, agents, servants, employees, licensees, successors, assigns, those 

in active concert and participation with Nanoptix, and all persons acting on its 

behalf or within its control from infringing, inducing others to infringe, or 

contributing to any infringement of the '855 Patent from continued acts of 

infringement pursuant to 35 U.S.C. § 283; 

C. An order awarding FutureLogic all damages adequate to compensate it 

for Nanoptix's patent infringement, such damages to be determined by a jury, and if 

necessary to adequately compensate FutureLogic for the infringement, an 

accounting; 

D. Assessing pre-judgment and post-judgment interest against Nanoptix, 

together with an award of such interest in accordance with 35 U.S.C. § 284; 

E. Declaring that this is an exceptional case under 35 U.S.C. § 285 and 

awarding FutureLogic its costs, expenses and attorneys' fees in this action; and 

-4- 

-A0057- 


INFRINGEMENT 

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F. Granting FutureLogic such other and further relief as this Court deems 

just and proper: 

Dated: October 14, 2010 BRETT J. WILLIAMSON 

MICHAEL L. MYERS 


By: 

JURY TRIAL 


Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, 

FutureLogic hereby demands a trial by jury of all issues in this action. 



-5- 

-A0058- 

_y:_-_L_,_m_'_ "_ "-11 



INFRINGEMENT

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['age 2 

U,S, PATENT IX)CUMEEI'S 6.923,721 B2 * g,_0_5 Luci,'LnO _t a! ................ 463,'24 

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FOREI(IN PA'I'F2¢F IXSCUMEN'I'S 

JP 11253609 A * 9;1999 

OTHER PUBLICATIONS 

Futarclogi¢. Inc,. "Operators and Tcchniclans ,Manual", Cop_igM 

2003. 

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METIIOI) AND APPAIO, TUS FOR GAM IN(; 

1 

PROMO'FION,_d, PRINTER 

CROSS-REF[:.R ENCE "f'O RI!I,Kt'FJ) 

:',d_PLICATION 

"[1)is applicatiou ckdms the benefit tlf I.LS. Prcwlsiorud 

F'atent Applicati(m No. 60,569.007. tiled Mar. 29, 2002. the 

enut_mts t,f which :arehereby iucorptlrated by n:lbrence as it" 

[blly stat,..xl herein. 

US 7,594,855 B2 

oftmdltlonal currcncles anti vonchers. Typically, a cashk.'ss 30 

enabled gatnlng machine has a _.lnlinR printer to produce 

vouchers mid a bill accepter tlun .qupports autotp_alic rtmding 

of vLnlchers. "l(_ enoMinate the mtivilies of muhlple cash h.'ss 

enabled gantiug lmtclfines, t)nc or mum cashless enabled 

gmning machines may be electronically coupled to a cashless )_ 

enablcxi gaming maclfine system that controls the cashless 

oper'..itions of a ensbless cnabk'd gaming machine. 

Wheo a player casln.$ out usiltg a cashless ¢lhqb [_.xtgaining 

machine tx',uplcd to a ca shk.'ss cmqbled gaming trug'liiue sys- 

Inn's, the cashless eua bh.'d gumhxg n_achinc si£.xtals the system 4a 

a ad the s vsttm't may demrmJne t he type of pay out pr,,L_u lcd to 

the player. [')ependi2._ on the size o f tlte pay out. the cashless 

enabled gaming n_)chine system nlay C'da_' the t_tshless 

enabh.,d gaming tnachiae to p_'_ent cairn iu ",,hetraditiOlXal 

methbxl c, fa slot nna:hine, or the cashless tmabled gaming 45 

machine system may cause a gaming printer ill the cashless 

enabled gaming machine to prod tg:c a voucher for tile va tun o f 

tile pay out. "tile voucher may then be redeemed in a ','_wicb"of 

Ways. Fnr exatnple, the voncher may' be redeemed foe casl| at 

a cashier's cage or us.ed with almther cashh,_s ena hk,'d gaming 

machine. In order to use the voucher in a caskless enabled 

gaming machine, tbe vtmd_er is inserted lute a bill accepter of 

anotbt_ ca:;hh.'ss enabled gaming machine at a partieipati0g 

casino mid tin: cashless enabh.'d gaming machine systc_n rue. 

ogni;,x:s the voucher, nMc'cms the ",oucher. and plact_ an 55 

appropriate amount ofpl aying cixxiit s on die cashless embk'-d 

gaming nlachhle; 

Over the last two years, cashless enabled gaming machines 

ha_,e timnd art increas_,ng aeceptat_:e ar_l u_ in the ginning 

industry with playcrs wba) eujoy the speed o fpkay _'mdcase o f 

mira;porting their wimfings around the casino aud the casinos 

who ha,,',: r_li_x.1 sitpfilicant labor savings in the foma of 

reduced _in hopper reloids in II1¢sanK-s, and an increase in 

r_weaue bo:atL_.: of the speed of play. This increasing accep- 

tance practically gnaramees a wide installed base of net- 6._ 

worked ganu._,; with captive player audintlces lbr issuance of 

coapom and promotimtal tickets using generally the same 

o..p.fipmenl alre_ly installed v, hhin a _tshlt_s enabled gaming 

2 

machine system tbr the purpo_ of suptmrtlng cashless gam- 

ing vouchers. 

SUMNLM¢.Y OF THE INVENTION 

In one aspect of the inveminn, a method of printing a 

promotional coupon in a .gaming cm'ironmem includes 

receiving cotqx',a data by a gaming i)romutk_nal printer in a 

cashless enablc.d game from a promotitmal controller via u 

conwauuications nclwork: The coupon data includes a enn- 

BACKGROUND OF Tile INVENTION 

Dm description written in a tcmptate dcIhxition language.The 

gaming promotioual printer then genenlles the ,,."oupon ush'_g 

This inveniion relates gancrally to gaming 

morespecifJeallytogamingprinte_peffom',ingpromotiomd 

conpon printing. 

printers mid 

I_ 

variable data and the coupon template in ruSlXtnse to a trigger. 

lu another asl_'ct of the inventiou, the vuxiahl¢ data is 

rocci_x'cl by the ginning promotional printer from the promotinnal 

controller via the con'unnaieations nelwork, In this 

7he _tmmg madman manulhcttw;.ng iodtLxtO" p_,,'idcs a 

a._peet, the promotional coutroller generates the trigger and 

variety of'gaming rots:hines lbr the amuscmeut of gambling 

wansmits the trigger to the gaming promotioual prinu,'r via the 

players. ,,'m exemplary ganling ntachine is a slot nmchlne. A _'.c_comnnmications 

network+ 

slot uLaehinc is an electromechanical game wherein ehanec or 

the skill of a player dctennit_es the outconte of the gante, Slot 

machines are usually 17Orntd in casinos _rr tuber n_re inS'banal 

gaming e'stahlishmems. 

In another aspect of the inventiotx the coupon dataincludcs 

trigger eonm)l parameters and the. trigger is geuerat_xl b2. .' the 

gaming prOmolional printer Ushlg the _'_g_.,W control pal-amete_ 

alKI trigger data. The' trigger data may include a date. a 

Ganli 0,g machine manul_mu rers have nmre recently intro- _s time of day, a frequency of issuance of'the conpou, or a time 

dnc.*.xl cashh.._s enabled gamin_ machines to flu: utarket and of play hy a player of a gaming ntachinc. 

these have b¢._un to lind v.qde acceptance in file gmnlng 

In another aspect ufthe invention, the gaming promotional 

indastry. (_'ashk..ms enabled ganting machines are _ named printer is t'tuahcr coupled In a gaming machine controller and 

beva_etht. T can conduct fiuam.ial t.'_.clmng_ usinga mixture the trigger data is rc'Ceivcd by the gaming promotlonal printer 

from a gamh]g ulachloe controller. '[hc trigger dam may 

inctnde a player identitier, an attunmt of mmley in phy on a 

gaming machine, a duration of a current session of play of a 

gaming nlnchlm, a cash-in of a player or a eash._mt of a 

player. 

In another aspnct of the invetuiom coupon issuance data it 

stored by the gamiug pmmof)onal printer and. d_ ¢o_pon 

issuanou daln is transmitu.M hy the gaming promotional 

printer to the promnlitnxat centroltcr via the O0nmumlcations 

[lctw()rk. 

In alaol l_'r aspect of the im'cttfiou, a prontolioual cOnlroll_r 

mmsmits coupon data tu a gaming pmntotional printer via a 

conununieatiuus network with the coupon &am including it 

coupon templale. The pron'auk'_nal controller transmits vari- 

able data and trigger data to the gaming promotional printer 

via the eortmtunienrioms xtelwu rk. In response to the transmLssiam 

the gurnit_ prumotional printer generates a eOUlmn 

using the coupon template and the variable daln. 

In earother aspcm of'the invention_ the gamit_8 promotional 

printer stoxs coupon issmuu:e data _md the promotional con- 

troller receives the coupon issuance data hy the promotional 

controller from the gaming promotional printer via rile comfn 

n stations nelwork. 

In another aspect of the invention, a ganting pmmolioual 

printea" conaprises a processor otgl n memory el,opted to the 

processor. The ntenao_' has stored program insarac'lioas 

cxt.n:'mable by the processor where the program inslmctions 

include receiving coupon data h)clu_ling a coulx)n tcmplate 

from a promotional cxuxlroltc.r via a entmtmnlcalions net- 

work. The program instructions Ibr the g;amlng pmm.otional 

printer al_) include instructiofls :for generating a coupon 

using variable data and the coulXm tentplat¢ in re, pause to a 

trigger. 

-A0071 - 

In auothe_ asI_t of the itwention, a promotional conWoller 

includes a proc_._sor mid a m_.maory coupled to the proce,_or. 

Prota"am iuslro¢tions for implementing the features of a pay. 

motionat controller are _,tored in the tnenm_, and are exncut- 

able by' the proeesmr. The pn'>gmm instructions inclnde: 

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Case 2:10-cv-07678-JFW-DTB Document 1 Filed 10/14/10 Page 19of32 Page ID#:23 

3 

transmilting ¢ouptm data to a _m_itL_z promotional printer via 

a ¢xlamtu nicatiorL_ nd_rk whereiu the coupon data includes 

a coupon template: trat_milting variable data to the gaming 

US 7,594,855 B2 

promotienal printer via the communications th?lwork: and 

tmnsmittiJ_g trigger data to the gaming pronmtiol_l printer ._ 

whereby the g..zunin8 promolioaal printer generates a coupon 

usirtg the cotrfa.m !emplale af_d the w.triable dala in response to 

the t risger data. 

BRIL:F Df-SCRIPTION OF TtlE DILsAVINGS 

These and otl_,r features, aspects, and 0dvnatages of the 

pre,.g_ltl invention will bt._cente better understood with _ard 

to the fbllowin8 description, appcudcd,Aaiat£ and accomFt. 

hying drawings where: 

FIG. 1 _ block din.gram illustrating a t_uning envimtmaent 

Utopia'inn coupon issatauce in aecocdance with an cxempla O" 

embodiment of the present invention; 

FIG; 2 is a deploymeaR diagram era coupon issuing systera 

h_ accordance with an exemplary embodiment of the p_sent 

invention: 

FIG. 3 is on illustration of a coupon including logical fields 

described in a _emplate based printer langt_ge in aconrdance 

with an exentplai3' embodiment of the presto i_'entiou; 

FIG. 4 is a bk_ck diagram of coupon remplate field ele- 

ments stored partially resident ill a pmmotlnnal gaming 

printer and parlially supplk'd by a musler promotional non. 

troller tn the thne of print ,and issue in accordance with an 

exemphu T embodiment of the presenl invention: 

FI(L 5 is a bl_'k diagram o fan t.'xentplary coupon "struck" 

and logical trigger ng, trix rt,_ident in n canting promotional 

primer in accordance with an exemplary embc, dinwnt of the 

pr_._it t {uvemion; 

FICr. 6 is a process tlow diagram urn coupcm generation 

process in accord,'utce with an exemplary esthodiment of the 

p re.s.em invention; 

FIG. 7 is a g'quenee diagram ofa eoalxm generating pro- 

o,.'ss in accordance with an exemplary emhcaliment of the 

pre._nt in'.eution; 

tq(3.8 is an architecture di_gr'_n of an exempl:u'y puma- 

tinted Coaling printex in accordama: whh an exemph,xy 

embtxiiment of the present invention; and 

FIG-. 9 is an architectnre diagram of on cxempl._, master 

promotintml controller in accordance with an excmplar 5" 

embodiment of the preSent inventiou, 

DETAI LI.:-D I)ESC1;HIrI'ION 

FIG, I is bltx:k diagram illustrating :t g_min8 envir_maeat 

employing cmtpolfing in accordance with an exemplary 

embcglitnent of the present invention. A player 100 uses a 

cashk'g'_ enabled g_m'tiag machine 102 In play n gambling 

game or game u f skill. :Ls lilt" pktyer plays the game_ a n_,;ter 

pmn_tioaa[ ta_ntr_flh.'r 104 coupled to ann or Inth'¢ _Jshle_ 

enabl_:d gaming machines thla_ugh a communications net- 

work 106 trig.gets the generation of promotional coupons 108 

lbr ,.tse by !he player- "lhe pa_motional coupons are gcnerat_.vJ 

by a promotional gaining pfintc'r 109 included in a cashless 

em_bl,"_l gaming machine. The m_st_._ p_x_morional couturier 

can either be a contrntler _'_',vork eonm'cted to one or m_rre 

gaming proomtiomd primei'.s, a camtroller within a c:_shlcss 

enablnd gaming machine or gaming promotional printer, or 

an inteliigem routing mtd nmnagement device lbr one ormore 

g_ promotional printers. Ill ol_ emb,:xlimon! of a master 

promotional con_oller, the mas|er promotional ctmtroltur 

direct_ the pron_totioml _ti'.'ity ul'the gaming promotional 

primers via dlrcct prt_motional campoa requests. In another 

4 

enlbodiulenl of a master promotinnal controller, the masler 

promotiorad controller uses a c_triess enabled gaming 

machine's gamin_ prumotiotml printer to store promotional 

c_npon databases and triggers. 

()nee a p_nV0tio_xal coupon lu_ b_,x_nisstv,:d by a banning 

promotional printc'r, the pronlolional _,x_upon amy be 

n.-d_med with a human operator or eashic-c 110. or redt_:ntcxl 

autoumti_lly thrnugh a anolher rudemptioa di.'-,,ica, such as a 

bill acceplor ia annth_ c.'_shh:s's enabled gaming machine 

112, or redceJucxt at a kiosk 114 which is not a game but 

pmvklcs some other fo_m ofanlomatic interf_e liar a pn_n_- 

tional cxmpon holder. 

In otvz embodiment of a ouster prOmotinnal controller, the 

mas_er promotional controller is coupled to the redemption 

15 tltwices. In another t_nlbodinlenl Of .111master pronmlional 

t_mtroller, a non-gm'ne kiosk or casino Ix'rsonnel amy or amy 

not htterface hack to the master protnorinnal ccmtmtler when 

redeeming a promotional o_sapon. ]afi_rtnntioll retort're to 

o.mponing ucrivhy is exchanged with the master promotional 

-_ controller, the net result heing the g_ning promotit.'naz_l print- 

ers littlng into the s)'stem as distributed, intelligent sub-units, 

signifloamty off-loading the nmsI_ promotional controller's 

real rime servicing requ;,remeuts and avoiding netw0rk head- 

width issues asgx:iated widt live strt-aming of promotiorml 

,5 coupons durh_g u r¢lalivcly short cash-oul tirae win&_w. 

In one gaming eo'Aronment employing eoupot'fing in 

accordance with an exeraplaq., embedimcnt of the prt,'sent 

invemint_, each gaming promotional prinler in the gaming 

enviroaraem l:as a unique "address or idenritier so llutt u popu - 

30 lati


enabled _mting machine u._s a bill accepter for redemption 

5 

ofpromotiomtl cotrtx_rts and acceptance el vouclx.rs or uash. 

In opemtiun, tl_. mastc'r promotional controller trar_.mits 

pac "_lS o1' variable dam or coupon dam describing a promotiotml 

dmabas_: Ill tile gaming promotional printer. "l.hc _.'nn- 

teats of file prumotkilkql dalaba,se include dat.'criptkms of a 

ptal_lity of promotional coupons, cash vouchers, advt.x'ai_- 

meats or other enticements whlch arc hereimtfter collo.:dvely 

rcf,.xred to a,_ "couptnLs". "['lie ganling proalotiothal printer 

re'ceives the promotional database lind stores Ih¢ prumotio_ml 

database in the gaming promotional printer's Itxal memory. 

The ganlin 8 prolnodollal printer also stores stx.cifications 

of how to print the comps.ins in its local memory. The specifi- 

cations of tile coupons are stored as templates writlen in a 

template bared printer language. This allows the txmpons to 

he pro-defined, formntlc.d, nnd stored ill the gaming promo- 

tional printer completely or partially for later recall, 

Upon reception of" a trigger dma sigual from either file 

master promotional controller or the game controller, the 

gamil_ preheat Mnal printer references ,-,aid parses the prolml- 

tiolml database and croupon templat_:s to generate m}d issue 

pronmtional coupons or ficket_ printed on paper lm.xtia. The 

paper media lnay bc llsod specifically fur thu purpo:/.e of 

generating promotional coupons, or the paper media may be 

used for the purpose of printin_ pay ollt yam:hers as,_iah.'d 

with easldess gaming. 

FIG. 3 is an illusmltion eta cmtpon including logical fields 

described in a temphne bas,.xl printer language in accotr.lance 

with aa exemplary cmbodlmem of the present invention. In 

this e×tmtple, a coupon may 300 inelnd,.: four typos of data 

fields: text fields, such as text field 302; ban:ode fields, such as 

harcode field 304; grnphic fields, st_ch its graphic f_ld 306; 

and line,'box drove fields, zuch as line]box draw lield 308. The 

fields of a coupon are d_,_eril',t.'d using coupon dcscripthm 

data included in an el_tmnie template that may be stored by 

a gaming promotional printer. A template may include a 

ptur, dity nffields in combination, resultin 8 in a paste-up style 

priate:J coupon. A plorality oftcmpk_res describing different 

_/_s of eonpon_, may be stored in a gaming promotic_Jml 

printer supporting a rich couponing envlromneat. 

The actual value or data lbr each of file fields de:;cribed in 

a coupon ttqnplate nlay or may trot be included in Ire ttanplate 

itself. For example, a template may include a bare'vale field lbr 

prindng a bah'ode 310. tlowever, the actual value of the 

borc_de is transmitted to a gaming promotkmal printer at the 

finn." a coupon is gtmerated using the coupon template, la this 

way, a coupon may have fields that include static data: such as 

graphic 312 in a graphic" field, or dyuanlic da_.l, snob as the 

name eta pln'tieular patron 314 in a texl field. In this wa,.: 

cast o mizx"d conlxms ntay be printed by a gaming proaiotiotml 

primer withou! It.ansi'erring large aw_ums of data through a 

communications network coupling a ginning promotioual 

printer to a maslor promotional controller. 

in addition, data that is used to lmek u_lge o f coutx'ms amy 

be included in a oaupon, Fur ,.-"xan]ple, a bar,.:txle field or a tt..'xt 

field may be usud to print a bnrccxte value or re'el sfi'ia_ 

uniquely identifying a eoulxm. In this way, a gaming provi- 

slordl printer creates an hnage of a ba_ode or bareodes, 

characters or marks that truly be read by a cltshless euabhxl 

gaining roaclfil_ bill ace+,T.tor on the same or am,thor c_shless 

enabled gaming machine, alknving automatic acceptance of 

coupons into a cashl,,_s troubled gaming system in a casino or 

at'x_ther related _asino property. 

A CoupOn letup'late includes a plurality of e.onnmmd 

strings, I_qch comlnand strh_ ennfi_,rats to the following syntax: 

US 7,594,855 B2 

5 

delinfiter.¢cmd l,tr>i1 

Ildd ilt_le_ eomntent 

where: 

delimiter:-a delimin.'r clmtacter 

=c,Jmatand identifier loiter 

6 

=f_lds which include inlbrmatian relative 

to the con-roland 

I_Pipe clmmcter, This se_'cs as tim ddimiter bctwcea data 

fields ia a connnand. 

;=Semi-colon. This is a cotmncat field designator. 

A temp/_te defining a coupOn udheres to folhw:ing syntax: 

ddlmitet< template clad_lit> J < t_d> I l 

qla_start> I l I I I I t I I I 

,:print region attributes. "Fais contains sp_ial 

instructlm_s on handling of tile print region. A "0" indi- 

cates text will be sent in a print batch coammmL A "1' 

indicates u._ text which follows in pr data field for a 

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print rogkm. A '2' indicates a prim _'gion will auto 

itteremtmt with t,._ch coupon in a hatch. "llle bose._,_alue is 

stetx'd in apr dale field. A '3" indicatcs aa auto-decre- 

n_.'nt prita region which will auloMecremem with each 

coupon in a batch. "fee base value is stored in apr data 

field. 

:_perm_lently stored data which always appears 

in tiffs print region. This field contains aorcd text if 

reqtv..._led by tmtering u '2" ill ,:pr ate> field. 

A libra D' command is uacd to mmxage dclincd ,graphics. A 

llbmry corollated adhcn.'sto the fi_lluwing s)attax: 

dellnfiter< fibrary_cmd_hr> I I I 

i l Id_file size> i obj. data delimiter 

wttere: 

._opcmtiun to per]on'a: "..V- add abject, enter 

download mode. 'D'----dele*e nbjcel. 

-ta_et memory in which to place the object being 

& _e,'td ended. 

=object identificalinu.This is the ubj_'t LI). byte. 

•ahem req>_memory usage s_"eifier. For loading a 

graphic: size of a graphic file. Tb-e library colmrmnd 

header is temrinated after this field ate! obj_data is 

exr, c¢led inmn.'dialely following. For d,:lctiug graphics: 

"G" is used in this lick]. 

:4ile sizx: indicator. 

obj_data +object data (font or gn_phic) in appropriate format 

iF _ib filnct>='A `. Fonrta! tbr grnphics: P(LX. 

FIG. 4 is a block diagr.tm o ]coupon template field deanenl 

slored partially re:;ident in a promotional '_mfing printer and 

partially suppli_xl by a muster pmmotlnnM contr_llar al the 

lime of print mid issla: in accurdance with all exemplary 

embodhnent oftbe present im'entiou. FIG. 4 illestcates bow a 

master promotional commilcr selects a type of coupon and 

transmits txtniculars, sudl as variable data to be placed ill 

fieldsin the eOUlXm, lbreaehprint andissnaat'ee'cenL Values 

fiw the fields that make up a coupon 300 may be divided into 

two groups or sels. A resident '._ariahte data set 400 may be 

stored locally in a gaming promotional printer. "Ire residcnl 

set of variable data may in.chide variable tklta such as: wa riable 

data for a text field containing an identifv.'r 0fa casino 402: 

vt_abla data lbr a harcode field identify'inn a type of promotion 

404: a lemplate description uscxl to generale _ grapkic 

stv,:h as box variable data 406 or line variable data 408; or an 

identifier or actual variable data fur a graphic 410. A dynamic 

variable data set include variable data for lields having vari- 

able data that are stored in the _aming promolional prlntcr and 

,are saved ill a template definition lbr a parlianlar coupon. 

Examples of variable dale ill a dymmfie variable data set 

include: text variable data for a player identifier 414; text 

variable data describing a promolinn item 416; and barcodc 

variable data 418 tbr qnaatil_,'ing a valae nfa promotion far 

printhlg on the coupon. 

I_*lh variable data sets nay be tnmsmitted from a mastcr 

pruatetional conttxlll_ 1114 to a g_uning pnunnfiunal printer 

in tile foal of communication packets. When a gaming pro- 

motional printer receives a variable data set. the gaming pro- 

me]tonal printer stores the variable data set lhr l'UttLre use. A 

r,-";idcot vartable dala set includes variable data thai may be 

rtnlsed lot generating lima)' eoupotL_: Ihereibre: a residenl 

variable data set row2' be stored in tile gaming promodmmi 

printer K)r an c_ tandL'd perlt_d oftinle. In contrast, a dynamic 

variable data set may be u_%_l for a short period of lime. 

perhaps for even a singJe generation of a single coupon. As 

str_h, the dynamic variable data set and static ','ariable d_a set 

a_oci_ted in a coupon may be tr.msmitted In a gamin 8 pro- 

me]tonal printer at differcnl times. '1"o retain amrreiation 

US 7,594,855 B2 

bclwccn the ',a_riable data sets. part of the cxnnnmnit_tion 

packet issued by the nmster promoliotml eonlroller m_' 

8 

include a reference 420 to a templare definition so thai the 

dynamic data in tile cmmnunieatian packet can be combined 

._ 422 with the static field dam stored in a gamin 8 promotiolval 

printer m geJ_.'rate a on,replete coupon 200, 

Since it is possible to ante all fields u_xl in a coapon within 

the ganfin 8 promotional printer's memory', a master promo- 

tin_'tl controller may issue a complete eemptm by simply 

to stmding a reference to a coupon so defined to generate a 

coapon in its cotirety. It is also possible fore master protnolionel 

coutroller to ollload the cairo live conmmnication 

burden by sending a complete eOUl_m &Jtabase including 

Irig$ers die'inn off-peak times. 

15 In one emb,xiintent of a gaming promotk_nal palmer, a 

gamins promotional printer is triggered to print eoupoIL_ from 

the gaming promotional printt_'s intoned database ulx'k:r 

direct control of a master pronacrtional controller that triggers 

the issaanee ofu coupon aml _nvcTs any i_riiuealt ,,affable 

20 information as:a_iated with the couptm such as promotion 

type. face value of the coupon: date of expiration and the like. 

FIG. _ is a block diugrant tffaa exemplary coupon stack 

and logical tdgger mmrix resi&.mt ill a gaming promotionM 

priato" in aecoi'dal_n whh all _genlphn'y *.mlbodiment of the 

2s present invemion. As previously r_ttxl, a ganriug promotional 

printer may prfitt a coupon in response to either internal or 

t-_,temal evenl si ,gimls or trigger data, "lb rcapond to a trigger, 

a gamh_g promoficnud printer inehid_ a coupon seleetur 

logic mudule 500 that analyzes trigger data $02 as triggerdata 

30 becom_ available arid determirres which coupot_ts should be 

printed in resporL,;e to the IriRg.er data. Coupons, tmeh as 

coupons 504,506, and 508. are storcd in a exmptm database 

510 as a stack. The stack of coupons ate a plurality of pro- 

defined coulxms that c;m generate a coupon 511 anytime a set 

35 of trigger conditions to whicia a coupon is associated is sat- 

isfied. These trigger conditions can operate independently or 

in logical combination. 

Exemplary logical trigger data utilized in a gaming promo- 

tinmai printer for initiafio, g generation of eoapom includes: 

4o dale 512, time ofday 514, frequency of issuance ofa ixlrficu- 

far coupon 516. fimeof play 524, and game issued parang:ters 

526 In the printer such as player identification, _nounl of 

money' in place, duration ofthe current session of play and the 

like. By utilizing the illusw_ted trigger matrix, it is possible 

•:5 for a gaming pronmlional printer to issue coupon:; without 

,'my. information provided by nn master promotinnai control- 

ler at tie,: time of a cash-out or c_h-in by a player. 

In one gamin_ prt_motiolml printer in ,'a:cordanc¢ with an 

t.,'xemplary embodiment of the invention, the gaming proton- 

50 rional print er reecb,'es ]Ivan a master promotinr,2J controller a 

coupon trigger datab_ then:by enabling file _aming promotinnal 

prinler to v21f-nmnage ils eouponing activity. The eou- 

Ixm trigger database may inchgie differtmt tylx's of trigger 

t_xmtrol pannnetars including: triggering a coupon,genera]fen 

55 anytime a cash one reacher is printed; generating a etmpon 

whct_ever a voucher for greater than. equal 1o. or less than a 

spccified amount of mon,..T is issued; generating a coupon 

based on antidentity era player:_ gemn'ating a et_upna ba sod on 

a category Or classification era player reia|c_d to frequent 3, of 

t/t'_ play or mont. V yah,me; g_c'ratin 8 a coupon based on the 

duration of play nf lhe gmnhig maelfine by a player; and 

generating a coupon an)qinle a player adds money or credils 

to a 8rune in an ,'nnount g.nrater than. equal In, or less liana 

specitled amount. 

6s In another aspect o f the invention, a componem of the 

-A0074- 

gaming promolional prinlcr's internal database includes a set 

nf cont_l parameteus that im,_tmet the gaming prnmotlonal


print_.x to sek'cl the type, quantity, mrd IKNucney o ft.xmtxms 

9 

to create told issue related to any of the triggers list-,xl above, 

These control par, tntett"rs may operate sepamtaly or in comblnation 

with each coupon in the database. P'ar;m_ett._s that 

may be used include: a loud quantity era coupon being issued 

before the coupon is retired from tile coupon database; a 

fixWo e ra:'y 518 of issuance o fa coupon based on die nmn her o f 

occurrences of sped ru.,d trigger cwcnts; a frequcno., of isso- 

;irate era eou/_n bast._ Dn r-a_)don! odd.¢ 520, $uc'h ax oue in 

one hundred trigger events; a haekup tampon or t._upons 

should a partieuhr coupon lifil It_ print fi_r lack of satisfying 

its specified set of qualitiers: whethcr or not the coupon is 

issocxt hased on the fi me th.e trigger tx:curre

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Case 2:10-cv-07678-JFW-DTB Document 1 Filed 10/14/10 Page 23 of 32 Page ID#:27 

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and nscs the input dcvice signals In detcxrt the state of the 

gaatiag promotional printers eavirumuem. 

The plxw:essor is fmlher conpted to a network dt_,{cc 714 

via a netw,3rk device eontroller 71 ._and the bus. The prt_*:ss 

u::;c_, the network device to cortununicate with other prOcess- 

ing systems, such a.,¢ a master promotional contro|ler or a 

8amine m,'_hine controller as pP,,..','iously described. 

FIG. 9 is an architecture diagram clan exemplary promo- 

liomal master pr_yn_otio{m] ctmlrol|er in ac¢otdan_a." with an 

cxemplao' cnthi_iment of the present invention. A master 

pn)motional controller inclndt.',.; a procc's,',_r 9{}1 operatlvcty 

coupled via a syslcln bus 902 1o a main alel_lol_' 904.11_e 

processor is alsn coupled to a storage device 9Og Viaa storage 

coniroller 906 aml the bus. In opcralion, program instructions 

924 implementing a master promotiotu, I controller arc stored 

on the storage dcvicc un Ill the pn)ce'ssor retrieves the pro_am 

instructions aud stores them in lhe main memo_. "l'hc pro. 

ec_r lhen executes the corJlputer prugmm instructions 

sit}red ill the nmln n'l¢-.-qlo_" to implement the l:21fltlres of a 

nla._,tt2" p_n_'_tional controller as dt_crihed abe,a:. 

The processor is further coupled to a ner0,'urk device 914 

via a nee'ark device conln_ller 912 nnd the bus. The prncess 

usea the network device to cou_.q'lttnJc.aL_ with other proo2&_- 

ing systems, such as a ,Atoning promotional printer or a sam- 

ing machine Commller as pr_'ionsly ck'scrihed. 

Although this invention has b.._n described in certain spc- 

title embc,dimenk_, ninny _dditJonal fru_difw:*ti(_ls and val'ia. 

tiot_ wottld be apparcul to those skitlt_l in the art. It is there- 

fOre tO be under_.lt_d that lifts invention may be practiced 

otherwise titan as specifically d,:'scrihed. Thus, the pt'est_lll 

embodiments of the invcntiuu shonld be considered ia all 

r_l'eects as illustrative and no1 rcq.trietivc, the scope of the 

inventkm to be delermincM by" any claims supported by tiffs 

application and the clahns" equi_nleuts rather thm_ the fore- 

going description. 

Wlml is clainmd is: 

I. A p_u,otinnal printer, comprising: 

a main communicalion port lbr ¢'nupling the promotional 

printer to a nt_n:hine ¢xmtroller, the main commttaiccaion 

tx_rl adapled tt_ r_'eive voucher data flxnn the machine 

controller: 

an auxiliary commurticalka_ port. sepan,te ti'om the main 

communication port, for coupling the promotional 

printer to a prnnwqinnat controller, the auxiliary eum- 

raunication port adapted tO receive coup_nl data dir,:ctly 

from Ire promotional eon_dter _parat¢ly of the 

lmachlne eon_fller: and 

a prtx_essur adapted to: 

roceive tire voucherdata from file ruaehine controller via 

the main o3mmnnicntion port and generate a voucher 

using the vole:hcf '_aa; and 

n.'ceive the cou_,n data tMm the prmnotinnal controller 

vii, the auxiliary commulficati,m por_ aud generate a 

cot,pan usitlg the cx)upnn data. 

2. The prontt_tional printer of claim !, wherein tl_ peacessot 

is fu ether adapted to etmdnct conponing activities in serial 

with _.'ouchering activities, 

3. Tim pn_motiorafl prinler of claim 1, wherein the proct_- 

sor is fu_her i_lapted m ¢ondu,2i couponing activities in par- 

allel with voueheriug activities. 

4.. The promotional priuter of 1, wherein: 

file o3npon data includes a i=oupon tc'mplate_ amt 

the proceSSOr is further adalned Io goner'ate the c_mpon 

using variable data and file coupon template. 

5. The promotional printer of claim 4, wherein the proces- 

sor IS further adapted to receive the variable data from the 

promotiomd controller via the auxiliary, communication port. 

US 7,594,855 B2 

12 

6. The pmmutional printer of claim 4, when-in the peaCe's- 

sot is further "adapted to r_x-'elve the ,rariable data from the 

tnachhte comroller via the main cotnnttmicafion port. 

7. The protaotiortul primer ofe|ninl 4. wherein the proct._sor 

is ftu"ther adapt,,xt to goner'ate flit: con[Kin in Ix!spa n.¢,_to a 

trigger. 

8. "['he promotinmd primer of claim 7, whc'rcin file pn'.ces - 

sot is further adaptcxt to receive the trigger ft_m the mactfine 

contrnller via Ire Inltin e_*nlnlt_icatlon porl. 

to 9. The promotional primer of cintra 7. wheroln the pn'n:es- 

sot iS further a_Laptcd to receive the trigger from the prOmo- 

tional txmtroller via the auxiliary communication !m._rt. 

10. The plxunolioltal printer of claim 7, wheruin: 

the coupon dam inchates triggc'r control parameters; aml 

15 tim pr_X:essor is further athlptnd to: 

receive trigger data; and 

geuerme the trigger using lhe trigger control pam_._ners 

mxd the trigger dam. 

I 1. "]'he pmmotiolm{ printer of claim 10, wherein the pro- 

20 ces_r is fitrther adapt,='d to receive the trigger dam from the 

pronv3tional conwMler via the auxiliary, conununicatinn poll 

i 2. The promotional printer of claim 10, ",_,herein the pr_- 

cess,3r is further adapted to receive the trigger dala from the 

machine enntmller via the main commtmicatioa port. 

._5 13..]he promotional primer nfelalm 10. wherehl the trig. 

gee data i.nclades a dean. 

14. The promotional printer ofelaiol 1O, ',¢her¢in ale trig- 

gee data includes a time of day 

15. The promotional printer o f claim I 0, wherein the trig- 

30 gcrdataincludesa fro4uencyufLs_uanceoftheeoupon. 

I6. The promotional printer ofclalm 10, wherein the triggee 

data includes a time of play by a player of a g_unhlg 

machine eonlrolh.M by the machine controller. 

17. The pmmotimm{ printer of claim I 0, wherein the trig- 

35 ger data includes a player idamiliei of a player nf_ ginning 

machine controlled by the machine controller. 

I g. The promotional printer of claim It}, wherein the t/'ig- 

gee data includes m{ amount of monLw in play nn a gaming 

4.o machine ¢ontmth.-d by the machine controller. 

19. The promothmal primer nfelaim 10. wherein the trig- 

ger dala h_chgles a duratiou of a current session of play of a 

pe'_,ning nmchinc commlled by the machine ctmtroller. 

2{}. The promothmal printer of claim 10_ wherein the trig- 

45 gcr datait_lndesacash-inofa player nfa _uning maclthre 

controlled by the machine controller. 

21. The promotional pet,tier of claim I 0, wherein the trig- 

ger data inchrdes a cash-out of a player ofa gamin_ machine 

controlled by the machine controller, 

.% 22. "].he promotional primer of claim 10, wherein the trigger 

data iucludas a_ expiration dale. 

23. The pmnxotional printer of claim 4, whcrein the vari- 

able data includes a player identification of a player of a 

gamit_g nmelfine etmtrolled by the machine conm_llcr. 

55 24. The pmmutkinal printer of claim 4, whereiu the variable 

data includes a ganfing machine idcntifmtion ofu gam- 

ing machine controlled by the machine controller. 

25. The promotional per'dee of claim 4, when.qu the vari- 

able data includes an cxpimtlon date. 

g, 26. The promotio_ml printer of claim 4. wherein the earl. 

able data iucludcs a bmx:_x_e, 

27. The promotional printer of claim 4, wherein the s,'artable 

data iaeiud*.._, an inmge. 

28. The promotkmal printer of claim 4: wheru'in the vail- 

6_ able dam includ,..'s an image era coupon. 

-A0076- 

29. The promotin,ml printerofelaim 1. wherein thet.'x_,pon 

is a promotional coupon fi_r g_ts,

Case 2:10-cv-07678-JFW-DTB Document 1 Filed 10/14/10 Page 24 of 32 Page ID #:28 I 

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30. The pmmotion'M printer of claim !, v,'he_in the ¢_mpon 

is a promotional coupon for a _cr4ce. 

31. The promotional printer of claim l, wherein tim 

voucher is a voucher redeemable in a gaming nmchine. 

32. The promotional printer of claim t, wherein the 

voucher is a cash-out voucher for a gaming machine. 

33. The promotional printer of cintra 4, whercin the waft. 

able data ineha_:s a Ffaphlc im:_e. 

34. 1'he pron_totionel printer of claim 4: wherein tbe waft- 

able dam includes a graphic image of a coupon. 

3& The promotional printer of claim 1, whcwcln the pro- 

censor is timber adapted to Wanr_'_ t coupon iss_muce data to 

the promotional conm_ller via the auxiliary communication 

.port. 

36. A method o f printing coupo_ by a promotional printer 

having a main conmmnication pan for coupling the promo- 

tional.printer t ° a machine comrgll _. the nmin.communlca- 

lion pbrt ;idapted to receive voucher data from the inachine 

commller for priming a voucher, the method comprising: 

rocelving cdupon dam from a promotional controller via an 

ai_il/ary commuaicnffan port separate from the nmin 

conanuni_don port, the auxiliary, communication port 

adapted to retelce the coupon data dircctb _ from the 

pmmorional controller and separately of the machine 

controller:, and 

printing a coupon by the prontotional ntachi_m printer 

using tl_ coupon data. 

37. "Ihc melhod of claim 36, further comprising: 

roceiving the vouchcr data by fire promotional printer from 

a gaming machine controlled by the machlna coulroller 

via the mum commtmicntinn port; and 

printing the voucher by the pmmotlonal printer using thu 

vouchc'r data in serial with generating the coupon. 

38. The melhedofclaim 36, further comprising: 

r,_iving the vou_:he.r data by the promotional printer fg_m 

a g.'Lmlag machine comrolled by the m,_chine controller 

via the main cmnmunication port; and 

printing the voucher by the promotional printer using the 

voucher data in pamllet with printing the coupon. 

39. "l_e method of claim 3& wherein the coupon data 

includes a coupon template, fire method further comprising 

priming the coupon using variable cLam and the coupon tem- 

plate. 

40. "lhe method vf clahn 39, wherein the ,,'affable data is 

rcccivod from tl_ prc)motJonal controller via the auxiliary 

conununication pod. 

41. The metht_l of claim 39. wherein the variable da_a is 

roccived fi'om a gaming machine conlrolkxt by the machino 

controller via the main contamination port. 

42. The mOJx-_d of claim 39, further comprising printing 

the ¢oupot+ in re_pon_ to a h"igger. 

43. The method of claim 42, ftLrther comtx_:iag mceivlag 

the trigger I_am a g;aniag nmcMne cx)lRrolted by tim machine 

contm!ler via _e main eommttaicati_m port. 

44. The mclhod of claim 42. furthe* comprising receiving 

the trigger tFom the pmmotkmal controller via the auxiliary 


45. The method of claim 42, wherein the coupon data 

includes trigger control parameters, the method further com- 

prising'. 

receiving trigger data; and 

priming +he trigger using the Ulgger control parameters and 

the trigger data. 

46. The methad ofeJmm 45, further comprising receiving 

the trigger data from the promotional commllo" via the auxiliary 

communication porl. 

US 7,594,855 B2 

14 

47. The method of claim 45j further comprising re;.:eiving 

the trigger data from a gaming machine controlkxt by the 

nmchine contmt, ler via the main communication port. 

48, Tim method of claim 45, wherein ti'te trigger dam 

._ in¢lude_ a date. 

49. The med'..od of claim 45, wh_ein the trigger data 

includes a ti/ae of day. 

50, 't'he nrethod Of chdm 4S, who'bin tim trigger dam 

incluc_ a freqnem"y of is_aace of the coupon. 

to 51. The method of clMm 45_ wherein the trigger dam 

includes a tinm of play by a player of a gaming maclfine 

conttollod by the machine controller, 

52. The meth6d of claim 45, wherein the u'igger data 

inclu&_, a player ide_ifier. 

t5 53. The melhed of claim 45_ wherein the trigger data 

incluck."s an amount of mm_t in play on a gaming machine 

c'ontroHed by the mnchine controller. " 

54J The fi_hed 6f claim "45, Wherein the trigger data 

inelude_ a duration ofa carnmt _ssion of play nfa gandng 

_o amcLdne controlhxl by tl_ machine commller: 

55. The method of claim 45, whereJ_ the trigger data 

includes a cash-in o fa player nfa gaming machine cotltmllod 

by the machine controller. 

56, The methtxt of claim 45_ wherein the _gger data 

25 inetudes a cash-ant of a player of a gaming maeMne con- 

trolled by the madfiue controller, 

g7. The method of claim 45, wherein the trigger data 

includes an expiration date. 

58. 7[hc method of claim 39, wherein the variable data 

3o includes a player idm_ttification of a player of a gaming 


59. The method of chdm 39, wherein the variable data 

includes a gamin8 machine identificalinn of a gaming 


3s 60. The method of vlaim 39, wherein the variable data 

includes an expiration date. 

61. The method of claim 39, wherein the variable data 

inch_s a bar_le. 

62. The m_hod of claim 39, wherein the variable, data 

4t_ inelu_ an image. 

63. The m_xl of claim 39. w'nerdn rite variable dam 

includes an image of a coupon. 

64. The method of claim 36. wherein the coupon is a 

.,5 pmmodonal coupon forgonds. 

65. "H_e method of claim 36, ',','_ the coupon is a 

promotional coupon for a service. 

66. The method of claim 36, wherein tire voucher is a 

vouch_ redeemable in a gaming machine, 

_0 67. The method of claim 36_ wlremin the voucher is a 

cash-ore vouche* for a g,_,ning m,_hine, 

68. The method of claim 39, wherein fl;e variable data 

includes a graphic image. 

69. "lhe m_hed of claim39, w_in the variable data 

,s_ includes a graphic image of a coupon. 

'70. The method of claim 36, further comprising tromtnit- 

ling coupon i_uauee data to the pmmotim_ol controller via 

the auxiliary commmfi_,aion port. 

71, A promotional printer, comprising: 

6o voud_r dam _coiving means for rec¢ivin 8 voucher data 

f_ra a mnchin¢ controller;. 

coupon da_a reedving me.a_, _c-parare from the voucher 

data rcceivlng meam+ for ro,.'eivin g coupon data directly 

from a pmmbtional controlk*r and separately of the 

6s machine corm'oiler: 

printing means for printing a coupon using theeonpon data 

and for printing a voucher using the vouchcx data. 

-A0077- | 

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' Case 2:10-cv-07678-JFW-DTB Document 1 Filed 10/14/10 Page 25 of 32 Page ID #:29 

15 

72. "l'h¢ pr,3molional printer ofclaim 71, wherein the cc, u- 

pon dam receiving means is an auxiliar] communication port 

awJ the voucher d.'lla receiving m _tmns is a m_in communion- 

don porT. 

73. The promotional primer of cla',ma 71. fi.mh,n' compris- 

ing variable dam receiving n_as t'or axeivirJg '*'affable data 

lbr the coupon, v,'herein the printing means ug's the variable 

data aud the couture data to print the coupon. 

74. The promotional printer of claim 7.1, wherein the '*_rl- 

able data receiving n_ans is a main commlmicatlon port. 

75. The promotional printer ofchim 73, wherein the vari- 

able data receiving m_ns is an anxil/a_ commtmicalioa 

port. 

76. Thepnmm_tlotml printer of claim 7X wherein the vari- 

able data is received from a gaming machine conlrol]c'd by the 

machine conlroller. 

77. The promotional primer of claim 73, wherein the vari- 

able data is .."e_b,'ed flx_.l/i file prt_aoliot_l coutroller, 

US 7,594,855 B2 

II -A0078- 

16 

78. The promt_i0nal printer of claim 71, wherein the print- 

ing n_ans printsthe coupon in response to a trigger,the 

promotion,-d printer futlher comprising trigger i"ecciving 

means for receiving the trisger. 

5 79. The pn..xnotional printer of claim 78, wherein lhe pro- 

motional pmtter rcoeiv¢_ fl_e trigger fi'om the promotional 

cool.roller. 

$0. The promotiolaal p_lter ofclaim 78, wherein the pm- 

rcmtit_'lal primer receives (he trigger fa:,m a 1gaming machine 

10 controlled by the mnchin;_ controller. 

_1. "J"he promotional printer n f cl,'_n 71, wherein the cou- 

pon is a p_t_.',tioual coupon for goods. 

82. The promotional printer ofclaim 71: wherein tl_ cou- 

pon is a promotional cot_poa for a gervice. 

15 83. Tire promotional printer of claim 71, wherein the 

voucher is a voucher red_x.m_able in a gaming machine. 

84, The proreofional printer of claim 71, wherein the 

voucher is a cash-out voucher for a gaming machine.




NOTICE OF ASSIGNMENT TO UNITED STATES MAGISTRATE JUDGE FOR DISCOVERY 

This case has been assigned to District Judge John F. Walter and the assigned discovery 

Magistrate Judge is David T. Bristow. 

The case number on all documents filed with the Court should read as follows: 

CVl0- 7678 JFW (DTBx) 

Pursuant to General Order 05-07 of the United States District Court for the Central 

District of California, the Magistrate Judge has been designated to hear discovery related 

motions. 

All discovery related motions should be noticed on the calendar of the Magistrate Judge 

NOTICE TO COUNSEL 

A copy of this notice must be served with the summons and complaint on aft defendants (ff a removal action is 

filed, a copy of this notice must be served on all plaintiffs), 

Subsequent documents must be filed at the following location: 

iX] Western Division 

312 N. Spring St., Rm. G-8 


U Southern Division U 

411 West Fourth St., Rm. 1-053 

Santa Aria, CA 92701-4516 

Failure to file at the proper location will result in your documents being returned to you. 

Eastern Division 

3470 Twelfth St., Rm. 134 

Riverside, CA 92501 

Cv-_8(03/o8) NOTICE OF ASSIGNMENT TO UNITED STATES MAGISTRATE JUDGE FOR DISCOVERY 

-A0079- 

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Case 2:10-cv-07678-JFW_-B Document 1 Filed 10/14/10 @ge 27 of 32 Page ID #:31 

I (a) PLAINTIFFS (Check box if you are representing yomselfO) 

FIJTURELOGIC. iNC., a Califomla Coqmradon 

UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIA 

(b) Attorneys (Firm Name, A_drt_ and Telephone Nt_n)her. If you Pw¢ rcprcv:nting 

you_lr, provgde tarry.) 

Brett J. WilliaJmon (S.B. ,¢t4S235); Michael L. Myers (S.D, #240652) 

O'Melveny & Myers LLP. 610 Nexcp_rt Center Drive, 17th Floor. Newpor_ 

Beach, CA 92660 Tel (949) 760-9600 Fax (949) g23-6994 

II. BASIS OF JURLqDICTION (place an X in one b()x only.) 

D I OS. Gnvemment Plaimiff _3 Feder'alOuestlon (U,S, 

Government Not a party) 

O 2 U.S. Govemm¢nt LMfendanl O 4 Diversity (Indicate Citizenship 

IV. ORIGIN (Place an X in ova: boa only.) 

of Parties in Item III) 

CIVIL COVER SHEET 

DEFVNDANTS 

NANOPTIX. INC., it Canadian Corp,ocation 

Anerneys (If Known) 

IlL CITIT.I_NSIJIF OF PRINCIPAL PARTIES - For Diversity Cases Only 

(Place an X in one box for phintiff=od one for defeudaat,) 

PTF DEF PTF DEF 

Citizen of This State O I O I Incorporated nr Principal Place Q 4 [] 4 

of Busine,_,s in this State 

Citizenof Another State O 2 Q 2 I ncorporated and Principal Place O 5 O 5 

of Business in Another State 

U.itlunorSubjectofaForeignCounuy 03 03 Foreign Nation 06 06 

_t'l Original 12 2 Removed from O 3 Remanded foam O 4 Reinstated mr [] 5 Transfened from another district (specie): [] 6 Multi- [] 7 Appeal to District 

Proceeding State Court Appellate Court Reopened D&tfct Judge front 

Litigation Magistrate Judge 

V. REQIJESTEDJNCOMPLAINT: .IURYDEbIAND: _'tYes ONo(Check'Yes'onlyifdemandedineomplalnI.) 

CLASS ACTION =rider F.R,C.P. Z3: 0 Yes _No 0 MO_IL"k' DEMANDED IN COMPLA I_qr: $ 

CAUSE_FACT_N(Citath_U_Civi_tamt_uderwhichy_ua_ingandwriteabri_f_tat_m_t_f_attse. Donotcitajudsdictional smtutesunlessdiversltT. ) 

Patent In_n_em_t under 35 U.S.C. Section 271 

VIL NATUR g" OF SUIT (Place an X la one bol only,) 

_ OT'KEIt KrATUTES 

[] 400 State Reapportionment 

{21410 Antiwast 

0430 Barfl(sand Banking 

O 450 Co_n:e/lCC 

Rates/etc. 

0 460 D_portadon 

[] 470 Racketeer Influenced 

and Corrupt 

Organizmior_ 

0480 Cor_urr_r Cradle 

[]490 Cable/eat TV 

0810 Se I¢_tive Service 

[] 850 Seeurltics/Cotranoditles/ 

Exchange 

0875 CustomerChaflenge 12 

USC3410 

ogg0 Other StamtocJ Actions 

891 Agr_cul_lJ._l A¢I 

0 892 Economic Stabilization 

Act 

[] 893 Envilonmenta] M_tter* 

[] 894 Energy Allocalion ACt 

[] 895 F_edom of laiD. Act 

O 900 Appeal of Fee Determi- 

nation Uudct Equal 

ACeetS to Justice 

O 950 Constimtio_talityof 

Shale Star,Jr e_, 

' COt'O'RACT.. 

[] IIO tnsurmac¢ 

O 120 Marine 

O 130 MillerAct 

O 140 Negotiable Instnlment 

O 150 Recoveryof 

Overpays©or & 

Enforcement of 

Judgrr_nt 

-1151 M¢dicLre Act 

152 Recovery of De fauhed 

S_dent Loan (Excl. 

Veterans) 

3 153 gccoveryof 

Ovt:q_ymtmt of 

Veteran's Bermfi_ 

3 160 Stoekholdert'Suits 

[] 190 OtherContraet 

[] [95 Contract Product 

LiabiliP/ 

[] 196 Frtmchi_ 

. RE&L PROPERTY" 

O 210 Land Condcnmetion 

[] 220 For_loaur¢ 

FOR OFFICE USE ONLV: Case Ntunbor: 

[]230 Rent Lea.se & Ejcem_fl! 

O 2g0 Torts co Land 

0 245 Tort Product Liability 

D 290 All Other Real Property. 

rottrs 

PEJLSONA L INJURY 

310 Ai_lane 

_[315 Airplane Product 

Liability 

_3 320 /L_sault, Libel & 

Slider 

"1330 Fed. E,mploye_" 

Liability 

-I 340 Marne 

-1345 Marine Product 

Liability 

3 350 MotorVeldcle 

[3355 Motor Vehlcle 

Pruduct Liability 

[] 360 Other Personal 

Injury 

0362 Personal Injury- 

MUd Mal peacti¢¢ 

0365 Personal Injury+ 

product L/abili_ 

O 368 Asbett0s Peesothal 

]nju_ Ptuduc| 

I./abiffty 

IMMIORA'flON 

D462 Natundization 

Ap#icUioa 

3463 Habeas Coq_- 

Alien D_ainee 

465 Other Itranigralion 

Aetlon_ 

lbK'l_ 

FERSONAL 

PROPERTY 

0 370 Oth.er Fraud 

[] 371 Troth in Lending 

0380 Other Personal 

property Dmnage 

[] 385 Property Damage 

product Liability 

3422 Apical 28 use 

158 

3 .123 Withdrawal 28 

USC 157 

-'.. CIVIL RIGHTS 

-1441 Voting 

3 442 Employment 

0443 Housing/Accommodations 

0 444 Welfare 

0445 Ar_dcan with 

Oi.sabliitie_ * 

Employment 

0 446 An_:ric=n with 

Disabilities - 

Other 

0440 Other Civil 

Rights 

I'_ISOUER .- i; 

l_iTrloNg 

_3510 Motions m 

Vacate Sentence 

H aboz4 Corpus 

3 530 General 

-1535 Oea_ Penalty 

23540 Mandamus/ 

Other 

[] 550 Civil Rights 

O555 pdsoe Coodition 

FOI_EII"UFJ_ / 

PI_ALTY '-'/ 

O610 Agriculture 

[] 6:'0 Other Food& 

Drug 

[]625 Drug Related 

Seizure of 

Property 21 USC 

881 

0 630 Liquor Laws 

_640 R.R, & Troek 

"1 650 Airline Regs 

-1660 Occupational 

Safety _Healrh 

-1 690 Other 

AFTER COMPLETING 'FILE FRONT SIDE OF FORM CV-./I, COMPLETE THE INFORMATION REQUESTED BELOW. 

CV-71 (05/08) CIVIL COVER SIIEET 

I -A0080- 

"" L,_qR. ., 

O 710 Fair Labor Smnda.'xls 

Act 

[]'120 Labor/MEtal, 

Relations 

0730 LabodM gem: 

Reporting & 

Disclosure Act 

;3"/40 Railway Labor Act 

-1 "/90 Other Labor 

Litigation 

-I "]91 EmpL Ret, Inc. 

Sec_ty Act 

• PROPERTY RIG'S 

20 Cop_ghts 

30 P_.tem 

0 g40 Tmdem._sk 

SOCIAL SECURrI'Y 

Ogrl HIA (1395fl) 

O962 Black Lung (923) 

0 g63 DIWC/DIWW 

(405(g)) 

[3 864 5SID TitlcXVI 

0 865 RSI (405(g)_ 

FED]_JUd. TAX SUITS 

r_g70 Taxe,; (U.S. plaintiff 

D't fendam) 

"3 _tTI {RS-Third patty 26 

USC 76119 

Page I of 2

,_Case2:10-cv-O7678-JFW-_B Document1 Filed 10/14/10 _le28of32 

UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFOP.NIA 

CIVIL COVER SHEET 

VIII(a). IDENTICAL CASES: Has this action been previously filed in this court and dismissed, lemanded or Closed? _Wo 13 Yes 

tfyes, list ca.'in number(s): 

Vl|l(h), RELATED CASES: Haveanycasesbecnprcvious]yfiledinlhiscourttilatarcrelatedtethcpmscntcas¢? _No _Yes 

If yes. h_t c_¢ number(s): 

Civll cases a re deemed related if a previously flied case and the present case: 

(Ch¢_'k all bOxes that apply) OA. Arlscfromth¢_arne[_rcloselyretatcdtraus,_ctions, happenings, or cv_nts; or 

C/R. Call for dctecminaticm _ffthe same _r sub_ 't_nd_lty _elated or _imilar questions ofla_u and f_¢q _ 

[3 C, For other reasons would entail substantial duplication of labor if beard by different judges; or 

O D. Involve the same patent, ffaden_,a_k or copyfighq and one of the facto_ identifled above in a, b or c also i_ present. 

IX. VENUE: (When¢ompledng the [ollowinginfomvadon, useanadditionalshcet if neces._ary,) 

Page ID #:32 I 

(a) List the County in this District; California County outside oflhls District; St:tie if other than Califotnia; or Forclga Country., in which EACH named plaiatiffzcsides. 

O Check here if the _t_vcrnn,'enL its a_¢neie._ or cmpM:cees is a named plaintiff, If this box is checked, 6o,[0 item {b). , , I 

(b) List the County in this District; California Corn ty outside of this District; State if other than Califomla; or Foreign Country, in which EACH named defendant re_idcs 

[3 Check here if the [overnment, its a_encics or ¢tnpIovees is a nanxed d¢fcndanL If this box is checked, _o to item (c). 

(c) List the County in this District; California Couuly ouLside of this District; State if other than California; or Forclgn Country, in which _ACII claim arose. 

Nolo: In land condemnation cases, use the location of the tract of land Involved. 

County in this District:* California County omside of this Disuict; State, if other Ihmt California: or Foteign Count*3' 

Riverside 

* Los Ang¢|cs, Orange, San Bernardlno, Riverside, Ventura, Santa Barb=rao or Sire Luis Obispo Counties 

X. SIGNATURE OF ATTOPJ'/EY (OR PRO PER):( ___ Date October 14, 2010 

t...." - ! 

NoIIce to Counsel/Parties: Th¢CV_7_S-44_Civi_C_verSheeta_dtheinf_rmati_nc_ntained_t_i_n¢ith_rr_p_a¢_n_rsup_em_tthe_iugands_i_fp_ead_ngs 

or other papers as required by law. This form, approved by the Judicial Conference of the United States in Septenther 19"/4, is required pursuant to Local Rule 3-1 is not filed 

but {s u_ed by the Clerk of th_ Cot_ for the puq_ose _f statistics, _rtrmt and initiating the civil docket sheet. IFor more dot ailed insWac fions, see sepa rate instructions sheet.) 

Key to Statistical codes relating to Social Security Cases: 

Nature of Suit Code Abhrevlation 

gfl Ilia 

862 ilL 

863 DIWC 

863 - DIWW 

864 SSID 

g65 RSI 

Substattti_e Staten',enI of Caas¢ of A¢tlon 

All claims fur tw.¢ tth insurance benefits (Medicare) under Title I g, Part A. of the Social Security Act, as amended. 

Also, include claims by hospitals, skilled nursing facilities, etc., for certification _s provlde_ o f sol'vices under Ihe 

program. (42 U.S.C. 1935FF(b)) 

All claims for "Black Lung" benefits under Title 4, Part B, of tile Federal Coal Mine Health attd Safety Act tff 1969. 

(30 U.S.C. 923) 

All tidings filed by insured workers for disability insurance benefits under Title 2 of the Social Security Act, as 

amended; plus all claims filed for ehiki's i_sutattce bee.cries basc_t on disability. (42 U.S.C. 40S_g)) 

All claims filed flit widows or widowers insurance henefit:t based on disabili W trader Title 2 of the Social Secudty 

Act, as amended. (42 U,S.C. 405(g)) 

All claims for supplemental security income payments bsscd upon disability filed under Title t 6 of the Social Security 

Act. as anmnded. 

All claims for retirement (old age} and survivors benefits under Title 2 of the Son/a! Security Act, as amended. (42 

u,s.c. (g)) 

CV-7_ (o5/08) CIVIL COVER SllEET Page 2 of 2 

-A0081 - 

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AO 440 (Rev. 12/09) Summon_ in a Civil Acfion 

, , ,,,, " ,,, p ....... , 

FUTURELOGIC, INC., a California Corporation, 

Plaintiff 

v. 

NANOPTIX, INC,, a Canadian Corporation, 

Oefe,,da,, 


for _he 

Central District of California 

SUMMONS IN A CIVIL ACTION 

TO: (Defendant's name and address) Naneptix, Inc. 

699 Champlain Street 

Dieppe, New-Brunswick, Canada E1A 1P6 

A lawsuit has been filed against you. 

c,_,,_oo43V 10 7678 -j,_u 

CDT_ 

Within 21 days after service of this summons on you (not counting the day you received it) --or 60 days if you 

are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ. 

P. 12 (a)(2) or (3) -- you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of 

the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiffor plaintiff's attorney, 

whose name and address are: Brett J. Williamson, (S.B. 8145235) 

Michael L. Myers, (S.B. #240652) 

O'Melveny & Myers LLP 



Tel (949) 760-9600 

if you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint. 

You also must file your answer or motion with the court. 

Date: :1 41 1_ 

-A0082- 

CLERK OF COURT 

--- [ - s¢.,,a(,;_ofC/erio--;-_-_p._ Ct_rk

• Case2:10-cv-07678-JFW-DTB Document1 Filed10/14/10 Page30of32 

AO 440 IRev. 12/09) Sumn_ons in a Civil Action (Page 2) 

Civil Action No. 

PROOF OF SERVICE 

(This section should not be filed with the court unless required by Fed. R. Cir. P. 4 (I)) 

This sununons for (name of indivi_h:al and title, _f any) 

was received by me on (date) 

Date: 

I personally served the summons on the individual at (#lace) 

on (date) ; or 

ID [ left the summons at the individual's residence or usual place of abode with (nun!e) 

, a person of suitable age and discretion who resides there, 

on (date) , and mailed a copy to the individual's tastknown address; or 

O I served the summons on (name of individual) 

designated by law to accept service of process on behalf of (name oforgani:ation) 

CI I returned the summons unexecuted because 

CI Other (specifi,): 


My fees are $ for travel and $ for services, for a total of $ 0.00 

I declare under penalty of perjury that this information is true. 

Additional infonnation regarding attempted service, etc: 

-A0083- 

Ser_'er's signature 

Printed name and title 

Ser_,er_ address 

Page ID #:34 ! 

, who is 

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Case 2:10-cv-07678-JFW-DTB Document I Filed 10/14/10 Page 31 of 32 

AO 440 (Rev. 12,09) Sununons m u C'ivd A,.:hun 


for the 

Central District of California 

I FUTURELOGIC, INC..___aC?li,omia Corporation, I 

Page ID #:35 

I NANOPTIX, INC.,aCanadianCorporation, ) ((_)7_.._ 

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Defendant ) 

SUMMONS IN A CIVIL ACTION 

To: (Defendant's nume and address) Nanoplix, Inc. 

699 Champlain Street 

Dieppe, New-Brunswick, Canada E1A 1P6 

A lawsuit has been filed against you. 

Within 21 days after service of this summons on you (not counting the day you received it) -- or 60 days if you 

are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Cir. 

P. 12 (a)(2) or (3) -- you must serve on the plaintiffan answer to the attached complaint or a motion under Rule 12 of 

the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiffor plaintiff's attorney, 

whose name and address are: Brett J. Williamson, (S.B. #145235) 

Michael L. Myers, (S.B. #240652) 




Tel (949) 760-9600 

If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint. 

You also must file your answer or motion with the court. 

Da,e:_ lies 

I -A0084-

Case 2:10-cv-07678-JFW-DTB Document 1 Filed 10/14/10 Page 32 of 32 

AO 440 (Re','. 12:09) Sulml_ons in a Civil Action (Page 2) 

Civil Action No. 


(This section should not be filed with the court unless required by Fed. R. Cir. P. 4 (I)) 

This summons foi" (n,mle of imtividual and title, i/any) 

was received by me on (date) 

Date: 

0 1 personally served the summons on the individual at (place) 


0 I left the summons at the individual's residence or usual place of abode with b,ame) 

, a person of suitable age and discretion who resides there, 

On {date) , and mailed a copy to the individual's lasr known address; or 

I:l I served the sun'unoos on (name ofindividua 0 

designated by law to accept service of process on behalf of (name oforganiT.ation) 

171 ! returned the summons unexecuted because 

0 Other (spec_,)," 

My fees are $ for travel and $ 

I declare under penalty of perjury that this information is true. 

Additional intbrmation regarding attempted service, etc: 

-A0085- 


for services, for a total of $ 0.00 

Server's signature 

Printed name and title 

Server_ address 

Page ID #:36 I 

, who is 

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Case 2:10-cv-07678-JFV_TB 

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Document 14 Filed 12/27/1_Oage 1 _2(__5 

SETH E. FREILICH (State Bar No. 217321 ) 

sfreilich@orrick.com 

ORRICI_,, HERRINGTON & SUTCLIFFE LLP 

777 South Figueroa Street, Suite 3200 

Los Angeles, California 90017-5855 

Telephone: (213) 629-2020 

Facsimile: (213) 612-2499 

JOSEPH A. CALVARUSO (Pro Hac Vice to be filed) 

jcalvaruso@orrick.com 

CHI CHEUNG (Pro Hac Vice to be filed) 

ccheug(_,orrick.com 

ORRI(2K, HERR1NGTON & SUTCLIFFE LLP 


New York, New York 10019 

Telephone: (212) 506-5000 

Facsimile: (212) 506-5151 

Attorneys for Defendant and Counterclaimant 

NANOPTIX, INC. 


V. 


Plaintiff, 

Defendant. 


corporation, 

V, 



Counterclaimant, 


corporation, 

Counter-Defendant. 


-A0086- 

C[N_RALDISIRIC]OFCALIFORNIA 

8'( OEPUR' 

Case No. CV 10-7678-JFW(DTBx) 

NANOPTIX, INC.' ANSWER, 

AFFIRMATIVE DEFENSES, AND 

COUNTERCLAIMS 

Judge: Hon. John F. Walter 

Cv 10-7678-JFWtDTtlx) 

NANOPT X. N(" \NS_EI/.AFI:IRMAFIVI_ 

I)I:I, ENM :S. AND Cf)UNFI_RCI.AIMS 

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• Defendant Nanoptix, Inc. ("Nanoptix") hereby submits its Answer, 

including affirmative defenses, and counterclaims as to the Complaint for Patent 

Infringement of PlaintiffFutureLogic, Inc. ("FutureLogic")as follows: 

THE PARTIES ............ 

I. Nanoptix lacks knowledge or information sufficient to form a belief 

regarding the truth of the allegations in paragraph l and therefore denies the 

allegations. 

2. Nanoptix admits that it is a Canadian corporation with its primary 

place of business at 699 Champlain St., Dieppe, New Brunswick, Canada. 


3. Nanoptix admits that FutureLogic purports to bring this action under 

the patent laws of the United States and that this Court has subject matter 

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). Nanoptix, however, denies 

the merits of the claims asserted against it. 

4. Nanoptix admits that it is subject to personal jurisdiction in this 

district. Nanoptix denies the remaining allegations in paragraph 4. 



6. Nanoptix admits that venue is proper in this district, but denies having 

committed any wrongful acts upon which venue allegedly is based. 

PATENT-IN-SUIT 

7. Nanoptix admits that U.S. Patent No. 7,594,855 (the '"855 patent"), 

entitled "Method and Apparatus for Gaming Promotional Printer," was issued by 

the United States Patent and Trademark Office on September 29, 2009 with Mark 

Meyerhofer listed as the inventor. Nanoptix lacks knowledge or information 

sufficient to form a belief regarding the truth of the remaining allegations in 

paragraph 7 and therefore denies the allegations. 

8. Nanoptix lacks knowledge or information sufficient to form a belief 

- I " AN_WI:ROJ:NANOPIlX, IN(" 

-A0087- • 

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regarding the truth 

allegations. 

9. 

10. 

through 9 of this Answer. 

of the allegations in paragraph 8 and therefore denies the 

Nanoptix denies the allegation in paragraph 9. 

INFRINGEMENT OF U.S. PATENT NO. 7,594,855 

Nanoptix restates and incorporates the replies set forth in paragraphs 

11. Nanoptix admits that it sells its Paycheck products in this district and 

elsewhere in the United States. 

12. Nanoptix denies the allegations in paragraph 12. 




16. This paragraph of the Complaint states a legal conclusion that does not 

require a response. To the extent this paragraph requires a response, Nanoptix 

denies the allegations in paragraph 16. 


17. Nanoptix denies that Plaintiff is entitled to any relief whatsoever 

including the relief requested by Plaintiff in its Complaint, and therefore denies all 

allegations and relief requested in Plaintiff's Prayer For Relief. 

NANOPTIX'S AFFIRMATIVE DEFENSES 

FIRST AFFIRMATIVE DEFENSE 

(Noninfringement) 

18. Nanoptix is not infringing and has not infringed, either directly, 

contributorily, or by inducement, any claim of the '855 patent, either literally or 

under the doctrine of equivalents. 

SECOND AFFIRMATIVE DEFENSE 

(Invalidity) 

19. On information and belief, all of the claims of the '855 patent are 

I -A0088- 

- 2 " ANSV¢I{ROI'NAN()PIIX, IN("

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invalid for failure to comply with one or more of the requirements of 35 U.S.C. §§ 

101,102, 103, and 112. 

THIRD AFFIRMATIVE DEFENSE 

.............. (Laches and Estoppel) 

20. On information and belief, Plaintiff is barred in whole or in part fiom 

asserting the '855 patent against Nanoptix by the equitable doctrine of laches, 

waiver, and estoppel. 

286-288. 

FOURTH AFFIRMATIVE DEFENSE 

21. Plaintiff's ability to recover from Nanoptix is limited by 35 U.S.C. §§ 

FIFTH AFFIRMATIVE DEFENSE 

22. Nanoptix reserves the right to amend its Answer to assert further 

affirmative defenses based on future discovery and further factual investigation in 

this suit. 

NANOPTIX'S COUNTERCLAIMS 

For its counterclaims against Plaintiff, Nanoptix alleges the following: 

THE PARTIES 

23. Nanoptix is a Canadian corporation with its primary place of business 

at 699 Champlain St., Dieppe, New Brunswick, EIA 1P6 Canada. 

24. On information and belief, Plaintiff FutureLogic is a corporation 

organized and existing under the laws of the State of California, having its principal 

place of business at 425 E. Colorado Street, Suite 100, Glendale, California. 


25. This Court has subject matter jurisdiction over Nanoptix's 

counterclaims for noninfringement and invalidity pursuant to 28 U.S.C. §§ 1331, 

1338, and 2201. 

26. This Court has personal jurisdiction over these counterclaims both 

* 3 - ANSWI_MOFNAN(,PTIX. INC 

-A0089- -II 

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because Plaintiff is organized and governed by the laws of California, and because 

of this already-pending action initiated by Plaintiff. 

27. Venue for these counterclaims is proper in this judicial district 

pursuant to 28 U.S.C. §§ 1391 and 1400(b). 

28. 

concerning infringement of U.S. Patent No. 7,594,855 (the '"855 patent"). 

29. Nanoptix restates and incorporates the allegations contained in 

paragraphs 1-5 of this counterclaim. 

30. Nanoptix is not infringing, and has not infringed, either by direct 

infringement, contributory infringement, or induced infringement, any claims of the 

'855 patent. 

SECOND COUNTERCLAIM 

(Declaratory Judgment of Invalidity) 

31. An actual case or controversy exists between Nanoptix and Plaintiff 

concerning invalidity of the '855 patent. 



33. All of the claims of the '855 patent are invalid under one or more 

sections of the Patent Act, including (but not limited to) 35 U.S.C. §§ 101, 102, 

103, or 112. 

its favor that: 

NANOPTIX'S PRAYER FOR RELIEF 

Wherefore, Nanoptix respectfully requests that this Court enter judgment in 

(a) 

(b) 

FIRST COUNTERCLAIM 

(Declaratory Judgment of Noninfringement) 

An actual case or controversy exists between Nanoptix and Plaintiff 

Nanoptix is not infringing and has not ini'ringed any claim 

of the '855 patent; 

all claims of the '855 are invalid and/or unenforceable; 

-A0090- 

" 4 " ,%NSWt_I'I. OF NANOI'TIX. IN["

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(c) Plaintiff's claims are dismissed in their entirety with 

prejudice; 

(d) Plaintiff shall take nothing by way of its Complaint; 

(e) this is an exceptional case and awarding Nanoptix its 

reasonable attorney fees pursuant to 35 U.S.C. § 285 and 

any other applicable statutes, rules, or laws; 

(f) awarding Nanoptix its costs, and such additional relief as 

the Court may deem just and proper under the 

circumstances. 

Dated: December 27, 2010 Respectfully submitted , 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

Seth E. Freilich 

Seth E. Freilich (State Bar No. 217321) 



Tel.: (213) 629-2020 

Fax: (213)612-2499 

Joseph A. Calvaruso (Pro Hac Vice to be filed) 

Chi Cheung (Pro Hac Vice to be filed) 



Tel.: (212) 506-5000 

Fax: (212)506-5151 

Attorneys for Defendant Nanoptix, Inc. 

-5- ,%N,_ %&'hR (}/:NAN(H' llX, IN(" 

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DEMAND FOR JURY TRIAL 

Defendant and Counterclaimant Nanoptix, Inc. hereby demands a trial by 

jury on all issues so triable. 

Dated: December 27, 2010 Respectfully submitted, 

I -A0092- 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

Seth E. Freilich 

Seth E. Freilich (State Bar No. 217321 ) 



Tel.: (213) 629-2020 

Fax: (213)612-2499 

Joseph A. Calvaruso (Pro Hac Vice to be filed) 

Chi (2heung (Pro Hac Vice to be filed) 

51 West 52-nd Street 


Tel.: (212) 506-5000 

Fax: (212)506-5151 

Attorneys for Defendant Nanoptix, Inc. 

- 6 - ,'tNSWERI')F NANOPTIX. INC

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,ase 2:10-cv-07678-JFW-DTB Document 14 Filed 12/27/10 Page 8 of 8 Page ID #:77 


I am employed in the County of Los Angeles, State of California. I am over 

the age of 18 and not a party to the within action; my business address is 777 South 

Figueroa Street, Suite 3200, Los Angeles, California 90017-5832. 

On December 27, 2010, I served the foregoing document described as 

NANOPTIX, INC.'S ANSWER, AFFIRMATIVE DEFENSES, AND 

COUNTERCLAIMS 

On the interested parties in this action as follows: 

(XX) (By mail), I caused such envelope with postage thereon fully prepaid to be placed 

in the United States mail at Los Angeles, California. 

( ) (By Federal Express), I caused such document to be delivered overnight to the 

offices of the addressee. 

( ) (By Express Mail), I caused such document to be delivered overnight to the offices 

of the addressee. 

Brett J. Williamson 

Michael L. Myers 

O'Melveny & Myers, LLP 

610 Newport Center Dr., 17th Floor 


I am readily familiar with the firm's practice of collection and processing 

correspondence for mailing. Under that practice it would be deposited with the U.S. 

Postal Service on that same day with postage thereon fully prepaid in the ordinary course 

of business. I am aware that on motion of the party served, service is presumed invalid if 

postal cancellation date or postage meter date is more than one day after date of deposit 

for mailing in affidavit. 

(Federal) I declare that I am employed in the office of a member of the bar of this 

court at whose direction the service was made. 

IX)CSI.A1:290357, I 

I-4151)10 NS2 

Executed on December 27, 2010 at Los Angeles, California. 

I declare under penalty of perjury that the foregoing is true and correct. 

-A0093- 

Norm"_ Swcen'i_ 

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:10-cv-O7678-JFW-DTB Document 21 Filed 01/21/11 Page 1 of 4 Page ID #:93 

BRETT J. WILLIAMSON (S.B. #145235) 

bwilliamson@omm.com 

DAVID P[ DALKE (S.B. #218161) 

ddalke(_omm.com 

MICHAEL L. MYERS (S.B. #240652) 

mmvers@olnm.com 

O'ME_?ENY & MYERS LLP 


NewportBeach, CA 92660-6429 

Telephone: (949) 760-9600 

Facsunile: (949) 823-6994 

Attorneys for Plaintiff mid Counter- 

Defendant 

FUTURELOGIC, INC. 


Corporation, 

V, 



Plaintiff, 

NANOPTIX, INC., a Canadima 

Corporati on, 

Defendant. 

FUTURELOGIC, INC., a Calilbmia 

Corporation, 

V. 

Counter- 

Defendant, 


Corporation, 

Cotmterclaimant. 


-A0094- 

Case No. 2:10-cv-07678-JFW-DTB 

PLAINTIFF FUTURELOGIC'S 

REPLY TO NANOPTIX'S 

COUNTERCLAIMS 


CASE NO. 2:10-CV-07678-JFW-DTB 

FUTURELOGIC'S REPLY TO NANOPTIX'S 

COUNTERCLAIMS

Case :.):10-cv-07678-J FW -DTB 

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Document 21 Filed 01/21/11 Page 2 of 4 Page ID #:94 

Plaintiff and Counter-Defendant FutureLogic, Inc. ('TutureLogic") 

replies as follows to the Counterclaims by Defendant and Counterclaimant 

Nanoptix, Inc. ("Nanopfix") set forth in Nanoptix's Answer, Affirmative Defenses, 

and Counterclaims ("Answer") filed December 27, 2010. 

The Parties 

1. FutureLogic admits the allegations of paragraph 22. 


Jurisdiction and Venue 

3. FutureLogic admits that this Court has subject matter jurisdiction as 

described in paragraph 25, but denies that the allegations in Nanoptix's 

counterclaims have any merit. 

4. FutureLogic admits that this Court has personal jurisdiction over the 

counterclaims, but denies that the allegations in Nanoptix's counterclaims have any 

merit. 

5. FutureLogic admits that venue is proper in this district. 




7. In m_swer to paragraph 29, FutureLogic admits, denies, and alleges as 

indicated in paragraphs 1-6. 

8. FutureLogic admits that through its First Counterclaim, Nanoptix 

requests declaratory relief that the claims of U.S. Patent No. 7,594,855 ("the '855 

patent") are not infringed. FutureLogic denies, however, that the claims of the '855 

patent are not infringed. 




10. In answer to paragraph 32, FutureLogic a&nits, denies, and alleges as 

-A0095- 


- 2 - FUTURELOGIC'S REPLY TO NANOPTIX'S 

COUNTERCLAIMS 

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!:10-cv-O7678-JFW-DTB Document 21 Filed 01/21/11 Page 3 of 4 Page ID #:95 

indicated in paragraphs 1-5. 

11. FutureLogic admits that through its Second Counterclaim, Nmloptix 

requests declaratory relief that the claims of the '855 patent is invalid. FutureLogic 

denies, however, that the claims of the '855 patent are invalid. 


FutureLogic further denies that Nanoptix is entitled to the relief sought 

by the prayer for relief, set forth in paragraphs (a)-(f) on pages 4-5 of Nanoptix's 

Answer. 

AFFIRMATIVE DEFENSES 

Without acknowledging that FutureLogic bears the burden of proof or 

burden of persuasion with respect thereto, FutureLogic asserts the following 

affirmative defenses to Nanoptix's cotmterclaims: 


(No injury) 

Nanoptix's counterclaims are barred, in whole or in part, because 

Nanoptix has not suffered any legally cognizable injury. 


(No Damages) 

Nanoptix's counterclaims are barred, in whole or in part, because 

Nanoptix has not suffered any cognizable damages. 

WHEREFORE, FutureLogic prays that this Court enter an Order: 

1. That Nanoptix takes nothing by flais action; 

2. That Nanoptix's Counterclaims, and all claims for relief 

against FutureLogic in the Counterclaims, be dismissed with prejudice; 

attorneys' fees; and 

4. 

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That the '855 patent is valid and enforceable; 

That FutureLogic be awarded its costs of suit mid 

-3- 

-A0096- 

CASE NO. 2:10-CV4)7678-JFW-DTB 

FUTURELOGIC'S REPLY TO NANOPTIX'S 

COUNTERCLAIMS

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!:10-cv-O7678-J FW -DTB 

Dated: January 21, 2011 

NB1:810087.2 

, 

Document21 Filed01/21/11 Page4of4 PagelD#:96 

For such other relief as this Court deems just and proper. 

-A0097- 

-4- 

Respectftdly submitted, 

O _M ELVENY .... &MYERS LLP 

By: /s/David P. Dalke 

David P. Dalke 


FutureLogic, Inc. 


FUTURELOG1C'S REPLY TO NANOPTIX'S 

COUNTERCLAIMS 

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10-cv-07678-JFW-DTB Document 55 Filed 09/28/11 Page 1 of 14 Page ID #:878 

Michael D. Rounds (#133972) 

Adam K. Yowell (#273661) 

WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 

E-Mail: mrounds @watsonrounds.com 

E-Mail: agowell @ watsonrou nds,com 

Daniel M. Cislo (#125378) 

Mark D. Nielsen (#210023) 

CISLO_ THOMAS LLP 

1333 2 Street, Suite 500 


Telephone: (310)451-0647 

Facsimile: (310) 394-4477 

E-Mail: dan@clslo.com 

E-Mail: mark@cislo.com 

Attorneys for 1)efendant/Counterclaimant Nanoptix, b,c. 

FUTURELOG1C, INC., 

V. 







Nanoptix' MSJ -1- 

-A0098- 

Case No. 2:10-CV-7678-JFW (DTB) 

DEFENDANT'S NOTICE OF 

MOTION AND MOTION FOR 

SUMMARY JUDGMENT OF 

INVALIDITY OF THE '855 

PATENT 

Judge: Honorable John F. Walter 

Hearing Date: 10/3 i/l l 

Hearing Time: 1:30 p.m. 

Pre-Tri-al Conference: 12/16/11 

Trial Date: 1/10/12

Case 2 10-cv-07678-JFW -DTB 

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TO PLAINTIFF FUTURELOGIC, INC. AND ITS ATTORNEYS OF RECORD: 

PLEASE TAKE NOTICE THAT ON October 31, 2011 at 1:30 pm or as 

soon thereafter as the matter may be heard in the above-entitled court located at 312 

N. Spring Street, Los Angeles, CA 90012, Defendant Nanoptix, Inc. ("Nanoptix") 

will and hereby does move this Court for summary judgment on Plaintiff 

FutureLogic, Inc.'s ("FutureLogic" or "Plaintiff") Complaint, as U.S. Patent 

7,594,855 is invalid as a matter of law under 35 U.S.C. § 102(b). 

This motion is made foil.owing the conference of counsel pursuant to L.R. 7- 

3 which took place on September 13, 2011 regarding the matters at issue in this 

motion, and no agreement could be reached. Therefore, this motion is submitted to 

the Court for determination. 

This motion is based upon this Notice of Motion and Motion, the 

accompanying Memorandum of Points and Authorities, the Statement of 

Uncontroverted Facts and Conclusions of Law, the Declarations of Michael D, 

Rounds and Simmy Ahluwalia and the proposed Judgment and Statement of 

Decision submitted concurrently herewith, as well as all pleadings and papers on 

file in this action, and upon such other evidence and argument as may be presented 

by Nanoptix to this Court at the time of hearing. 

/// 

/// 

/// 


-A0099- 

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Dated: September 28, 2011 By:/s/ Michael D. Rounds 



WATSON ROUNDS 



Nanopti×' MSJ -3- 

-AO10O- 

Attorneys for Nanoptix, Inc.

Case 2 10-cv-07678-JFW-DTB Document 55 

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I. INTRODUCTION 

Filed 09/28/11 Page 4 of 14 Page ID #:881 

There is no genuine issue of material fact that FutureLogic offered for sale, 

sold and placed in public use the claimed invention of the '855 Patent more than 

one year prior to May 29, 2001. The claimed invention of the '855 Patent was 

reduced to practice on January 21, 1998 and offered for sale to Coca-Cola on April 

25 and October 18, 1999. Twenty-four (24) prototype units embodying the 

claimed invention were subsequently sold to Coca-Cola for $850 each, and installed 

and operated by Coca-Cola at locations throughout Cincinnati, Ohio without any 

confidentiality restrictions. The '855 Patent is therefore invalid as a matter of law 

under 35 U.S.C. § 102(b) and summary judgment must be granted. 

II. STATEMENT OF FACTS 

A. The '855 Patent and Its Prosecution History 

FutureLogic, Inc. alleges that N_optix, Inc. is infringing upon claims 1-6, 

36-38, 71-76, 78, 79, 83 and 84 of the '855 Patent. Statement of Uncontroverted 

Facts ("Facts"), _[ 1. The '855 Patent allegedly covers a promotional printer that 

prints vouchers and coupons for gaming customers, such as bar-coded redemption 

tickets and buffet coupons. Id. Independent claims 1, 36 and 71 claim, anlong 

other limitations, a promotional printer with a main communication port for 

receiving voucher data and an auxiliary port for receiving coupon data. ld., _ 2. It 

is this "dual port" embodiment of the claimed invention that the inventor Mark 

Meyerhofer alleges to be novel, ld., _ 3. Nanoptix disputes that this simple 

Nanoptix' MSJ - l- 

-A0101- 

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10-cv-O7678-JFW-DTB Document 55 Filed 09/28/11 Page 5 of 14 Page ID #:882 

concept is inventive, but a trial on that issue will not be necessary if the present 

motion is granted. 

The '855 Patent was issued on September 29, 2009 and filed as a provisional 

application on March 29, 2002. /d., _ 2. For purposes of this Motion, the critical 

date for the on sale and public use bars is May 29, 2001, as described more fully 

below, ld., _[ 20. 

1. The Antedating Meyerhofer Declarations 

During prosecution of the '855 Patent, the United States Patent and 

Trademark Office ("PTO") initially rejected all pending claims of the '855 Patent 

based upon the Rowe '320 patent, either alone or in combination with other prior 

art. Facts, q[_[5-6. FutureLogic responded by emphasizing the dual port aspect of 

its claimed invention, contrasting it to the single port for receiving voucher and 

coupon data in the Rowe '320 patent. Id., c][7. The PTO responded by finally 

rejecting all pending claims based upon the Rowe '320 patent and the Rowe '527 

published application and, in some instances, other prior art in combination 

therewith, ld., _[ 8. 

In response, Mr. Meyerhofer filed a declaration to establish inventive priority 

over the Rowe references. Facts, q[ 9. Specifically, Mr. Meyerhofer swore that the 

claimed invention of the '855 Patent was "...reduced to practice in the United 

States of America before July 10, 2001, which is the earliest effective date of Rowe 

'320 and Rowe '527." ld., _ 10. Mr. Meyerhofer provided detailed technical 


-A0102-


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drawings and photographs of the promotional printer that was his "claimed 

invention." ld. Although he didn't tell the PTO, the promotional printer Mr. 

Meyerhofer described was the PSA-66-VM Coca-Cola printer ("VM printer") that 

FutureLogic reduced to practice on January 21, 1998 and offered for sale, sold and 

placed in public use in 1999-2000, as further described below, ld., _[ 12. 

The PTO again rejected the claims, this time based upon the Rowe'065 

published application and the Nichols '241 patent and, in some instances, other 

prior art. Facts, _[ 13. In response, Mr. Meyerhofer submitted a virtually identical 

declaration, differing only its statement that the reduction to practice occurred 

"before December 119, 2000" in order to again antedate the new Rowe reference and 

other cited prior art. ld., q[ 14. As noted, the true date for reduction to practice of 

the claimed invention was January 21, 1998. ld., _[ 30. 

2. The Meyerhofer On Sale Declaration 

The PTO recognized the on sale and public use issues raised by the 

statements of Mr. Meyerhofer and his patent attorney, and issued another final 

rejection on 35 U.S.C. 102(b) grounds, requesting answers to several questions. 

Facts, q[ 15. The PTO stated that the objections would be withdrawn if FutureLogic 

established that the antedating device embodying the invention was not on sale or 

in public use. Id., q[ 16. Based upon yet another declaration from Mr. Meyerhofer, 

FutureLogic represented that "the present invention was neither made accessible to 

the public, nor used commercially, nor offered for sale or sold, before the critical 


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date of March 29, 2001." hL, _[ 19. The PTO issued a Notice of Allowance based 

upon the representations concerning the facts set forth in Mr. Meyerhofer's 

declaration. Id., _][25. 

B. The Coca-Cola Offer for Sale, Sale and Public Use 

FutureLogic signed two non-disclosure agreements in March of 1997 with 

Coca-Cola for the development of a promotional printer for its vending machine 

products. Facts, _q[ 26-27. Neither agreement imposed any confidentiality 

obligations upon Coca-Cola - the agreements' terms only imposed confidentiality 

restrictions upon FutureLogic. ht. By April 17, 1997 there was a printer 

specification drafted by third party Interleave Systems that disclosed a dual port 

promotional printer embodiment for receiving coupon and voucher data and 

printing both documents, ld., ][ 28. Consistent with the early development records, 

FutureLogic averred in its interrogatory responses that the claimed invention of the 

'855 Patent was conceived by September 3, 1997 and reduced to practice by 

January 21, 1998. ld., _[ 30 (Emphasis added). 

On April 25, 1999, more than 15 months after reduction to practice of the 

claimed invention, Mr. Meyerhofer sent a letter to Coca-Cola that provided quotes 

for a "CCUSA" printer. Facts, tl[31. The letter stated "What is proposed is a true 

product price; [there] have been no omissions which can lead to product up charges 

after the award of the conn'act." ld. The April 25 th quote included prices for 

production units based upon quantity ($395 to $450) and prices for two phases of 


-A0104-

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prototypes ($17,500 and $850, respectively). /d., _[32. The promotional printer in 

the quote was subsequently modified for features outside the scope of the claimed 

invention (See Facts, _[q[ 10, 12 and 14) such as power supply, printer width, 

packaging and paper width, ld., q[ 33. Coca-Cola responded to the April 25 tt' quote 

by ordering 24 units, although these units were never delivered, ld., qI 34. 

On October 18 th, in light of further modifications such as power and paper 

size unrelated to the claimed invention (See Facts, 111[10,12 and 14), Mr. 

Meyerhofer sent a quotation letter to Coca-Cola for the VM printer described in his 

PTO declarations. Facts, q[q[35-38. As a result of these non-patented 

modifications, the letter included higher prices for production quantities and phase 

1 prototypes, but the price of $850 for phase 2 prototypes remained the same as the 

April 25, 1999 quote. Id., t[ 39. ]n November 1999, The Coca-Cola Company sent 

a purchase order to FutureLogic tbr the phase 1 and 2 prototypes. Id., 1[40. 

Subsequently, in April 2000, Coca-Cola Enterprises sent a purchase order for the 

$850 phase 2 prototypes, the change in Coca-Cola entity reflecting the entity that 

would actually be operating the units in the field trial, ld. 

By March 10, 2000, FutureLogic had produced at least 15 VM printers and, 

after receipt of the April, 2000 purchase order, shipped the 24 VM printers to Coca- 

Cola. Facts, cI[I[41-42. FutureLogic followed up with invoices for the 24 units to 

Coca-Cola dated April 17, 18 and 20, 2000, respectively, ld. Coca-Cola placed the 

24 printers in its vending machines at locations throughout Cincinnati, Ohio for a 


-A0105- 

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Case 2 10-cv-O7678-JFW-DTB Document 55 Filed 09/28/11 Page 9 of 14 Page ID #:886 

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field trial to determine whether it would purchase the quoted production units. Id., 

q[44. FutureLogic was not privy to the locations or the models of the vending 

machines, nor was it involved in their installation or operation, hi., _[][43-44. 

According to Coca-Cola, FutureLogic's part of the agreement was "fulfilled with 

Coke upon delivery of the printers." ld., 7[ 45. 

The field trial was successful and Coca-Cola was still using the printers as of 

February 15, 2001. Facts, _t[46. Only two or three of the VM printers were 

returned by Coca-Cola to FutureLogic for repair or replacement - Coca-Cola 

owned and kept the rest of the 24 units, ld., _[ 46-47. Coca-Cola elected not to 

purchase the quoted production units, citing budgetary restraints, id. 

As demonstTated below, FutureLogic's offers for sale and sale to Coca-Cola 

of 24 prototype units, and the unrestricted public use of those units by Coca-Cola, 

invalidate the '855 Patent as a matter of law. 

III. ARGUMENT 

As the Court notes in its Scheduling Order, the standards for summary 

judgment are well-established and do not bear repetition here. Document No. 38, 

14:1-4. The overriding concern of the 35 U.S.C. § 102(b) on sale b_ is an 

inventor's attempts to commercialize his invention beyond the statutory term. 

Atlanta Attachment Company v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. 

Cir. 2008). There is no genuine issue of material fact that the claimed invention of 

the '855 Patent was offered for sale, sold and in public use prior to March 29, 2001 


-A0106-

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#:887 

under 35 U.S.C. § 102(b), and summary judgment is appropriate under Fed. R. Civ. 

P. 56(c). 

A. On Sale and Public Use 

A patent is invalid under 35 U.S.C. § 102(b) if the invention was offered for 

sale, sold or in public use more than one year prior to the filing date of its patent 

application. Conclusions of Law ("Law"), tl[_ 48, 51. The filing date for the '855 

Patent is March 29, 2002 and the "critical date" is therefore March 29, 2001. Id., (1[ 

49. Any on sale or public use activity prior to March 29, 2001 invalidates the '855 

Patent. Id. 

The on sale bar applies if two conditions are satisfied: "First the product 

must be the subject of a commercial offer for sale...Second, the invention must be 

ready for patenting." Law, 1[ 51; Pfaffv. Wells Electronics, 525 U.S. 55, 67-68 

(1998). 

1. The VM printer was on sale and actually sold. 

FutureLogic made very specific commercial offers for sale of the claimed 

invention to Coca-Cola on April 25, 1.999 and October 18, 1999, and sold the 24 

claimed VM printers pursuant to a purchase order issued by Coca-Cola against the 

October 18 th offer. Law, _q[ 55-56. After delivery of the 24 units, FutureLogic 

followed up with invoices to Coca-Cola dated April 17, 18 and 20, 2000, 

respectively. Facts, _ 42. A commercial contract for sale was made and performed 

as a matter of law, and it is irrelevant that the 24 units sold were prototypes. Id., _l[ 


-A0107- 

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#:888 

57. Atlanta Attachment, 516 F.3d at 1365. 

2. The invention was ready for patenting. 

The condition of ready for patenting may be satisfied in at least two ways: 

by proof of reduction to practice before the critical date; or by proof that the 

inventor had prepared drawings or other descriptions of the invention that were 

sufficiently specific to enable a person skilled in the art to practice the invention. 

Law, q[52; Pfaff, 525 U.S. at 66-68. 

FutureLogic avers in its interrogatory responses that the claimed invention 

was reduced to practice by January 21, 11998. Law, _ 54; Facts, q['][9-14, 30. This 

admission fully disposes of the ready for patenting condition. As noted, the VM 

printer is the claimed invention, ld. Mr. Meyerhofer's declarations submitted to 

the PTO to show reduction to practice attached exhibits showing the actual printer 

and the supporting technical drawings. Id. Mr. Meyerhofer described this printer 

as his "claimed invention," and admitted that he was referring to the VM printer. 

ld. 

As a defense to these undisputed facts, FutureLogic may not claim any 

experimental use exception to the on sale bar. See Facts, q[ 23. Once a claimed 

invention is reduced to practice, there can be no experimental use exception as a 

matter of law. Law, q[ 57; Clock Sl)ring, L.P.v. Wrapmaster, Inc., 560 F.3d 1317, 

1327, note 8 (Fed. Cir. 2009). Likewise, once there has been a commercial offer 


-AO108-

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#:889 

tbr sale, there can be no experimental use exception. I_L, Atlanta Attachment, 516 

F.3d at 1366. As a matter of law, there is no issue of fact for the jury to determine 

concerning the experimental use exception. 

The claimed invention was also in public use under § 102(b). As noted, the 

24 printers were placed in vending machines at locations throughout Cincinnati, 

Ohio commencing in April, 2000 and the public accessed them and printed 

vouchers and coupons. Facts, I[ 44. Neither Coca-Cola nor its customers had any 

obligation of secrecy, and FutureLogic had no control or involvement in the 

prototype field testing in which the printers were freely available for us. Facts, ¢{[q[ 

41-47. Law, _ 58. Under these circumstances, particularly FutureLogic's 

undisputed lack of control over the claimed invention, the public use bar under § 

102(b) also invalidates the '855 Patent as a matter of law. ld., Am Seating Co. v. 

USSC Group, Inc., 514 F.3d 1262, 1267 (Fed. Cir. 2009). 


The FutureLogic VM printer embodied the invention of the '855 Patent and 

was on sale, sold, and in public use in this country well over a year before the 

critical date. The VM's predecessor printer also embodied the claimed invention 

and was offered for sale prior to the critical date. Accordingly, Nanoptix 

respectfully requests that the Court grant its summary judgment motion and enter 

judgment that the '855 Patent is invalid under 35 U.S.C. § 102(b). 


-A010 9- 

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#:890 




WATSON ROUNDS 




-A0110- 

Attorneys ['or 

De f endani/C o unte rc laimant 

Nanoptix, Inc.

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#:891 

CERTIFICATE OF SERVICE 

Pursuant to Fed. R. Civ. P. 5(b), I certify that I am an employee of Watson 

Rounds, and that on this date, a copy of the foregoing DEFENDANT'S NOTICE 

OF MOTION AND MOTION FOR SUMMARY JUDGMENT OF 

INVALIDITY OF THE '855 PATENT has been served upon the counsel of 

record registered in this matter via the District of California's ECF Procedure. 

Dated September 28, 2011 By: /s/Robert Hunter 

An Employee of Watson Rounds 


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,2:10-cv-07678-JFW-DTB Document 55-1 Filed 09/28/11 Page 1 of 6 Page ID 

#:892 



WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsunile: (775) 333-8171 

E-Mail: rnrounds @ watsonrounds.com 

E-Mail: ayowell @watsonrounds.com 



CISLO _, THOMAS LLP 



Telephone: (310)451-0647 

Facsimile: (310) 394-4477 

E-Mail: dan @clslo.com 


Attorneys for DefendantCounterclaimant Nanoptix, Inc. 


V. 



Defendant' s 

Proposed MSJ 

Decision 

Defendant/Cou nterclaimant. 




-A0112- 

-I- 


DEFENDANT'S [PROPOSED] 

STATEMENT OF DECISION

Cas{, 2:10-cv-O7678-JFW -DTB 

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Document 55-1 

#:893 

Filed 09/28/11 Page 2 of 6 Page ID 

This Court, having reviewed Defendant Nanoptix's Motion for Summary 

Judgment and considered all admissible evidence and argument in support, 

opposition and reply thereto, issues the following decision. 

Summary judgment is appropriate if "there is no genuine dispute as to any 

material fact and the movant is entitled to judgment as a matter of law." Fed. R. 

Civ. P. 56(c). When ruling on a motion for summary judgment, all of the non- 

movant's evidence is to be credited, and all justifiable inferences are to be drawn in 

the non-movant's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 

(1986). Appling this standard, surmnary judgment is appropriate if no reasonable 

jury could return a verdict for the non-moving party. S.E.C.v. Pla([?)nns Wireless 

Intern. Corp., 617 F.3d 1072, 1094 (9th Cir. 2010). 

In this action, Plaintiff FutureLogic, Inc. ("FutureLogic") asserts that 

Defendant Nanoptix, Inc. ("Nanoptix") is infringing on U.S. Patent No. 7,594,855 

('"855 Patent"). Document No. 1. As a defense and declaratory judgment 

counterclaim, Nanoptix asserts that the '855 patent is invalid under the on sale and 

public use bar of 35 US.C. § 102(b) (Document No. 6, _[tl[19, 31-33), and now 

moves for summary judgment on this issue. Document No. 55. Specifically, 

Nanoptix contends that FutureLogic made offers for sale, sold and placed the 

claimed invention in public use in 1999 and 2000 based upon a printer that 

FutureLogic made for Coca-Cola. For the following reasons, the Court grants the 

Motion. 

Defendant's -2- 

Proposed MSJ 

Decision 

-A0113- 

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2:10-cv-O7678-JFW-DTB Document 55-1 Filed 09/28/11 Page 3 of 6 Page ID 

#:894 

A patent is invalid under 35 U.S.C. § 102(b) if the invention was on sale or in 

public use more than one year prior to the prior to the filing date of the application. 

35 U.S.C. § 102(b); Pfaffv. Wells Elec's., Inc., 525 U.S. 55, 67 (1998). 

FutureLogic filed a provisional patent application on March 29, 2002, and therefore 

any on sale or public use activity prior to the March 29, 2001 critical date 

invalidates the '855 Patent. Document No. 1, Exhibit A. It is Nanoptix's burden 

to prove the '855 Patent invalid based on either the on sale or public use bars by 

clear and convincing evidence. Microsc_? Corp. v. i4i Limited PalCnership, 

U.S. __, 131 S.Ct. 2238, 2245-2247, (2011); Clock Spring v. Wrapmastet, Inc. 

560 F.3d 1317, 1325 (Fed. Cir. 2009). 

The Supreme Court in Pfafffound that the on sale bar applies when two 

conditions are satisfied: First the product must be the object of a commercial offer 

for sale...Second, the invention must be ready for patenting. Pfqff; 525 U.S. at 67- 

68. The condition of ready for patenting is met if the patented invention is reduced 

to practice, ld. The ready for patenting standard also applies to the § 102(b) public 

use bar. Clock Spring, 560 F.3d at 1327. 

The ready for patenting condition is satisfied because FutureLogic averred in 

its interrogatory responses that the claimed invention was reduced to practice on 

January 21, 2008. Rounds Decl., Exhibit 10. Thus, the only issue for the Court to 

resolve is whether there was an offer for sale or public use of the '855 invention 

prior to March 29, 2001. The evidence is clear that there was. 


Proposed MSJ 

Decision 

-A0114-

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2:10-cv-07678-JFW-DTB Document 55-1 Filed 09/28/11 Page 4 of 6 Page ID 

#:895 

In determining whether an offer is a commercial one, the Federal Circuit 

applies general contract principles. Atlanta Attachment Co. v. Leggett & Platt, Inc., 

516 F.3d 1361, 1365 (Fed. Cir. 2008), citing Netscape Commc'ns. Corp. v. Konrad, 

295 F.3d 1315, 1323 (Fed. Cir. 2002). The offer must be sufficiently definite that a 

party could make a contract by simple acceptance. Id. There can be no dispute 

that FutureLogic made concrete offers to Coca-Cola on April 25 and October 18, 

1999. Rounds Decl., Exhibits 11 and 16. Both these quotations were for printer 

products that embodied the claimed invention that was reduced to practice on 

January 21, 1998 and contained price, quantity and other commercial terms, ld. 

The October 18 u' quotation was for the VM printer that the inventor Mr. 

Meyerhofer described in detail to the Patent Office as his claimed invention, and 

Coca-Cola accepted the prototypes offer through two purchase orders. Id., Exhibit 

3 at pp. 67-79, Exhibit 5; Meyerhofer Tr. 36:21-37:23, 130:20-133:18, 137:19- 

143:5. lit is undisputed that Coca-Cola purchased 24 units at a price of $850 each 

and placed them in the field in Cincinnati, Ohio for field testing. Rounds Decl., 

Exhibits 17 and 18, Meyerhofer Tr. 139:-140:6, 143:7-17. 

The Court also finds that the 24 units sold to Coca-Cola were in public use. 

Coca-Cola placed them in the field and was under no confidentiality obligations to 

FutureLogic under the parties' 1997 non-disclosure agreements. Rounds Decl., 

Exhibits 7 and 8. The printers were freely accessible by Coca-Cola personnel and 

the public who purchased soft drinks out of the Coke vending machines. 


Proposed MSJ 

Decision 

-A0115- 

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FutureLogic had no control (or involvement) with either Coca-Cola or its vending 

machine customers during the field trial. Meyerhofer Tr. 143:19-145:19. This is 

public use, not experimental use, because neither Coca-Cola nor its customers were 

under any obligation of confidentiality. Am. Seating Co., v. USSC Group, Inc., 514 

F.3d 1262, 1267 (Fed. Cir. 2009). 

Moreover, FutureLogic's claim of experimental use during the Coca-Cola 

field trial must fail as a matter of law. Once the patented invention is reduced to 

practice, there can be no experimental use defense. Allen Eng'g Corp. v. Bartell 

Indus., lnc, 299 F.3d 1336, 1354 (Fed. Cir. 2002); Clock Spring, 560 F.3d at 1327, 

n. 8. Likewise, once there has been a commercial offer, there can be no 

experimental use exception. Atlanta Attachment, 516 F.3d at 1366. The 

experimental use exception does not apply in this case. 

For each of the foregoing reasons, Nanoptix's Motion for Summary 

Judgment that the '855 Patent is invalid under 35 U.S.C. § 102(b) is granted. 


Dated: By: 

Defendant ' s 

Proposed MSJ 

Decision 

-A0116- 

JOHN F. WALTER 

UNITED STATES DISTRICT JUDGE 

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#:897 



Rounds, and that on this date, a copy of the foregoing DEFENDANT'S 

[PROPOSED] STATEMENT OF DECISION has been served upon the 

following counsel of record registered in this matter via the District of California's 

ECF Procedure. 



Defendant's 

Proposed MSJ 

Decision 

-A0117- 

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,2:10-cv-O7678-JFW-DTB Document 55-2 Filed 09/28Ill Page 1 of 3 Page ID 

#:898 



WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facswnile: (775) 333-8171 

E-Mail: mrounds @ watsonrounds.com 

E-Mail: ay_well @ watsonrounds.com 



CISLO _ THOMAS LLP 


Santa Monica, CA 9040 I 

Telephone: (.310)451-0647 

Facsimile: (310) 394-4477 

E-Mail: dan@ clslo.com 


Attorneys.fi)r Defendant/Counterclahnant Nanopti._, Inc. 


V. 



Defendant's 

Proposed 

.rudiment 





-A0118- 

-I- 


DEFENDANT'S [PROPOSED] 

JUDGMENT

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#:899 

This action came on for hearing before the Court, on October 31,2011, Hon. 

John F. Walter, District Judge Presiding, on a Motion for Summary Judgment, and 

the evidence presented having been fully considered, the issues having been duly 

heard and a decision having been fully rendered, 

IT IS ORDERED AND ADJUDGED that Plaintiff FutureLogic, Inc. take 

nothing, that the action be dismissed on the merits and that Defendant Nanoptix, 

Inc. recover its costs. 

Dated: By:. 

Defendant' s 

Proposed 

Judgment 

-A0119- 

JOHN F. WALTER 


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Rounds, and that on this date, a copy of the foregoing DEFENDANT'S 

[PROPOSED] JUDGMENT has been served upon the following counsel of 

record registered in this matter via the District of California's ECF Procedure. 



Defendant's 

Proposed 

Judgment 

-A0120- 

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)-cv-07678-JFW-DTB Document 56 Filed 09/28111 Page 1 of 11 Page ID #:901 

Michael D. Rounds (SBN 133972) 

mrounds @ watsonrounds.com 

Adam K. Yowell (SBN 273661) 

ayowell@watsonrounds.com 

WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facslrnile: (775) 333-8171 

Dmliel M. Cislo (SBN 125378) 

dan@cislo.com 

Mark D. Nielsen (SBN 210023) 

mark@cislo.com 


1333 2 Street, Suite500 


Telephone: 0 10)451-0647 

Facsimile: (310) 394-4477 

Attorneys for Defendant and Counterclaimant 



VS. 

Plaintiff, 

NANOPT1X, INC., 

Defendant. 




Case No. CV 10-7678-JFW-DTB 

NANOPTIX, INC.'S 

STATEMENT OF 

UNCONTROVERTED FACTS 

AND CONCLUSIONS OF LAW IN 

SUPPORT OF MOTION FOR 


INVALIDITY REGARDING THE 

'855 PATENT 


Hearing Date: 10/31/11 


Pre-Trlal Conference: 12/16/11 

Trial Date: 1/10/12 

Case No. CV 10=7678-JI_W-D'FI3 

Nanoptix, Inc.'s S latement of Unconu'overted Facts and Conclusions of Law 

-A0121-

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I-cv-07678-JFW-DTB Document 56 Filed 09/28/11 Page 2 of 11 Page ID #:902 

Uneontr0verted Facts Supporting Evidence " 

1. Plaintiff Futurelogic, Inc. ("Futurelogic") 

currently asserts that Defendant Nanoptix, Inc. 

("Nanoptix") infringes claims 1-6, 36-38,71-76, 

78, 79, 83 and 84 of U.S. Patent No. 7,594,855 

("'855 Patent") (the "Asserted Claims"). The '855 

Patent allegedly covers a promotional printer that 

prints vouchers and coupons for gaming 

customers, such as bar-coded redemption tickets 

and coupons for buffets. 

2. Among other limitations, independent claims 

l, 36 and 711 of the '855 Patent claim a 

promotional printer with a main communication 

port tbr receiving voucher data and an auxiliary 

communication port tbr receiving coupon data. 

3. The inventor of the '855 Patent, Mark 

Meyerhofer, testified that this "dual port" feature 

of independent claim 1 was what was different 

from the FutureLogic printers he had worked on 

previously. 

4. Mr. Meyerhofer is the Co-Chief Technology 

Officer of FutureLogic, its former President and 

FutureLogic's 30(b)(6) witness on topic numbers 1 

and 2 (conception) of Nanoptix's 30(b)(6) 

....Deposition Notice. 

5. During the prosecution of the '855 Patent, 

the United States Patent and Trademark Office 

("PTO") rejected all of the pending claims of the 

'855 application in its first office action dated 

March 21, 2007. 

6. The March 211,2007 rejection was based 

upon the Rowe '320 patent and, in some instances, 

a combination of the Rowe '320 patent and other 

prior art. 

7. Future Logic responded to the March 21 st 

rejection on July 23, 2007. In both the interview 

Rounds Decl, _[ 2, Exhibit 1 

at pp. 1:25-2: 12.1 

Rounds Decl. ¢1[3, Exhibit 2 

at Col. 1:4-16, 38-56, Cols. 

1:64-2:3, and Figure 3. 

Rounds Decl. I[ 3, Exhibit 2 

at claims I, 36 and 7!; 

Rounds Decl., t[ 4, Exhibit 3 

at p. 25,_ 3. 

Rounds Decl. ¢][22, 

Meyerhofer Tr. 31:19-32:3. 

Rounds Decl. _ 5, Exhibit 4; 

Rounds Decl. q[ 22, 

Meyerhofer Tr. 16:13- 

17:13, 184:9-185:23. 

Rounds Decl. 1[ 4, Exhibit 3 

at p. 92. 

Rounds Decl. q[ 4, Exhibit 3, 

at pp. 93-96, _q[ 5-7, 9. 

Rounds Decl. _[ 4, Exhibit 3 

at pp. 86-91. 

The pa_e numbers referenced herein refer to the consecutive page 

numbering of the exhibits, and not to the Bates numbering or-number of 

pages of a particular document. 

- 2 - Case No. CV 10-7678-JFW-DTB 

Nanoptix, Inc.'s Stalement of Unconu'overled Facts and Conclusions of Law 

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Case 2:1 FW-DTB Document 56 Filed 09/28/11 Page 3 of 11 Page ID #:903 

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emphasized the dual port aspect of its alleged 

invention. 

8. On October 16, 2007, the PTO finally 

rejected all claims of the '855 Patent application. 

In this second rejection, the PTO relied upon the 

Rowe '320 patent and the Rowe '527 published 

application and, in some instances, combined the 

Rowe references with other prior art. 

9. On February 28, 2008, FutureLogic 

responded to the PTO's October 16, 2007 final 

office action. In its response, FutureLogic filed 

the Declaration of Mark Meyerhofer to antedate 

the Rowe '320 patent and the Rowe '527 

published application. 

10. Mr. Meyerhofer stated that "the claimed 

invention of the '855 patent was actually reduced 

to practice in the United States of America before 

July 10, 2001 which is the earliest effective date of 

Rowe'320 and Rowe '527." 

11. In paragraphs 6 tol6 of his declaration, Mr. 

Meyerhofer described the promotional printer that 

met the elements of the claimed invention. The 

exhibits attached to Mr. Meyerhofer's declaration 

depict the promotional printer. 

12. The promotional printer described in Mr. 

Meyerhofer's declaration was the PSA-66-VM 

printer ("VM printer") which was provided to 

Coca-Cola. 

13. On May 13, 2008, the PTO again rejected 

all claims of the '855 Patent application. In this 

third rejection, the PTO rejected the claims based 

upon the Rowe '065 published application and the 

Nichols '241 patent and, in some instances, other 

prior art. 

14. On August 13, 2008, in response to the May 

13, 2008 office action, FutureLogic submitted 

another declaration of Mr. Meyerhofer to antedate 

the Rowe '065 and Katz '901 published 

applications. The second Meyerhofer declaration 

is identical to the first declaration except that it 

| -A0123- 

Rounds Decl. _ 4, Exhibit 3 

at pp. 80-85. 


at pp. 65-79. 


at p. 67, 1[ 5. 


at pp. 67-79. 

Rounds Decl. 1[ 6, Exhibit 5. 

Rounds Decl. I[ 22, 


37:23, 44:8-22. 


at pp. 61-64. 


at pp. 35-60. 

Rounds Decl. 1I 4, Exhibit 3 

at p. 39, I[5. 

-3- Case No. CV 10-7678-JFW-DTB 

Nanoptix, lnc.'s Slatement of UnconU'overied Facts and Conclusions of Law

Case 2:" )-cv-07678-JFW-DTB Document 56 Filed 09/28/11 Page 4 of 11 Page ID #:904 

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states as follows in paragraph 5: ...the claimed 

invention of the '855 patent was actually reduced 

to practice in the United States of America before 

December 19, 2000, which is the earliest effective 

date of Rowe '065 and Katz '901." 

15. The PTO issued afinal office action on 

December 3, 2008. In this office action, the PTO 

raised issues of whether the claimed invention 

described in Mr. Meyerhofer's declaration was 

either on sale or in public use under 35 U.S.C. § 

102(b). This was based upon the third page of Mr. 

Meyerhofer's declaration which stated "After 

being built, the promotional printer of was placed 

into operation and used for its intended 

purpose..." and the oral statement of his patent 

attorney that "FutureLogic has created products 

for use by other corporations." 

16. In its December 3 '_ office action, the PTO 

stated: "In the case of the facts revealing that the 

invention was involved in "public use" or "on 

sale" activities, the 35 U.S.C. § 102(b) rejections 

based upon a public use or sale of the invention 

will be maintained, ff the facts reveal otherwise, 

the rejection will be withdrawn." 

17, On June 3, 2009, FutureLogic responded to 

the December 3rd office action. 

18, In the June 3 ra response, FutureLogic stated 

the following: "...Applicant submits herewith but 

under separate letter, a Supplemental Declaration 

under 37 C.F.R. § 1.131 in order to further clarify 

the circumstances under which the promotional 

printer described in Applicant's two previous 

Declarations under 37 C.F.R.I. 131 dated 

February 11, 2008 and August 12, 2008, was 

reduced to practice." 

19. In the June 3 ra response, FutureLogic further 

stated the following: "Furthermore, and in 

accordance with Applicant's understanding of the 

rejection under 35 U.S.C. § 102(b), Applicant 

respectfully requests that the Examiner consider 

the additional information supplied in the 

Rounds Decl. Cl[4, Exhibit 3 

at pp. 31-34. 

Rounds Decl. q[ 4, Exhibit 3 

at p. 34. 

Rounds Decl. ql 4, Exhibit 3 

at pp. 26-30. 


at p. 29. 


at p. 29. 


Nanoptix, Inc,'s Slatement of Uncontroverled Facts and Conclusions of Law 

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Supplemental Declaration. Based on that 

additional information, Applicant submits that the 

present invention was neither made accessible to 

the public, nor used commercially, nor offered for 

sale or sold, before the critical date of March 29, 

2001. Accordingly, Applicant respectfully 

requests consideration and withdrawal of the 

rejection under 35 U.S.C. § 102(b)." 

20. The '855 Patent claims priority to U.S. 

Provisional Application No. 60/369,097, which 

was filed on March 29, 2002. The critical date is 

therefore March 29, 2001 and on sale or public use 

activity prior to that date invalidates the patent 

under 35. U.S.C. § 102(b). 

21. On June 26, 2009, FutureLogic filed Mr. 

Meyerhofer's third declaration signed by him on 

June 1, 2009, indicating that the submission was 

"inadvertently delayed." FutureLogic further 

indicated that "The contents and sufficiency of the 

supplemental declaration were discussed with the 

Examiner in a telephonic interview prior to the 

submission of the previous response dated June 3, 

2009." 

22. In his third declaration, Mr. Meyerhofer 

stated in paragraph 6 that Future Logic and the 

soft drink manufacturer (Coca-Cola) "... shared 

the costs of the project which resulted in payments 

to FutureLogic to cover a part of the costs." Mr. 

Meyerhofer also stated that "FutureLogic and the 

soft drink manufacturer were subject to a mutual 

non-disclosure agreement regarding the project." 

23. In paragraph 7 of his third declaration, Mr. 

Meyerhofer stated that "... a number of prototype 

promotional printers having the features of the 

invention were constructed by FutureLogic for 

experimental use during the period of the project." 

24. In paragraph 8 of his declaration, Mr. 

Meyerhofer stated that "During the operational 

period, the prototype promotional printers were 

only accessible by the technical personnel of 

FutureLogic and the soft drink manufacturer and 


atp. 3. 

Rounds Decl. _ 4, Exhibit 3 

atp. 29; 35 U.S.C. §102(b). 


at p. 22. 


at p. 23. 

Rounds Decl. c][4, Exhibit 3 

at p. 23. 


at p. 24. 

- 5 - Case No. CV [0-7678-JFW-DTB 

Nanoptix, lnc.'s Statement of Uncontroverled Facts and Conclusions of Law 

-A0125-

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)-cv-07678-JFW-DTB Document 56 Filed 09/28/11 Page 6 of 11 Page ID #:906 

were not accessible by the public." 

25. On June 25, 2009, the PTO issued aNotice 

of Allowance and withdrew its 35 U.S.C. § 102(b) 

rejection based upon FutureLogic's June 3rd 

representations. 

26. As of March 7, 1997, FutureLogic was in 

discussions with Interleave Systems to develop a 

printer for Coca-Cola. 

27. On March 20 and March 3 I, 1997, 

FutureLogic signed two Non-Disclosure 

agreements with Coca-Cola. Neither agreement 

imposed any confidentiality obligations upon 

Coca-Cola. 

28. An Interleave Systems' printer specification 

dated April 17, 1997 discloses a printer having 

two ports: 1) an RS232 port supporting 

programming and creation of coupons; and 2) an 

MDB port complying with Coca-Cola's 

"Electronic Vending Standard, Revision 1 Draft - 

Peripheral Communication." 

29. Interleave eventually "bowed out" of the 

Coca-Cola project. 

30. FutureLogic avers in an interrogatory 

response that the invention of the '855 Patent was 

conceived by September 3, 1997, and was reduced 

to practice by January 21, 1998. 

31. On or about April 25, 1999, FutureLogic 

sent a letter to Coca-Cola that provided quotes to 

Coca-Cola for a "CCUSA" printer, describing it as 

a "highly customized printer." The letter states: 

"What is proposed is a true product price; [there] 

have been no omissions which can lead to product 

up charges after the award of the contract." 

32. The April 25 "_quote included prices for 

production units based upon quantity ($395 to 

$450) and prices for two phases of prototypes 

($17,500 and $850, respectively). 

33. In correspondence dated May 3, May 18, 

and June 15, 1999, FutureLogic, with Coca-Cola's 

input, made modifications to the printer power 


at p. 25. 

Rounds Decl. q[ 7, Exhibit 6; 


Meyerbofer Tr. 105:21-24. 

Rounds Decl. tl[tj[8-9, 

Exhibits 7 and 8. 

Rounds Decl. q[ 10, Exhibit 

9 at pp. 118-19; Rounds 

Decl. _ 22, Meyerhofer Tr. 

1.09:17-110:16. 



108:1. 

Rounds Decl. eli 11, Exhibit 

l0 atp. 131. 


! 1 at pp. 135-36; Rounds 


119:5-18. 

Rounds Decl. _l[12, Exhibit 

ll atpp. 137-38. 

Rounds Decl. _ 13, Exhibits 

12-14; Rounds Decl. q[ 22, 



Nanopdx, lnc.'s Slatement of Uncontroverled Facts and Conclusions of Law 

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)TB Document 56 Filed 09/28/11 Page 7 of 11 Page ID #:907 

supply, printer width and packaging and paper 

width to reduce the cost of each printer at 

production. 

34. On July 16, 1999, Coca-Colaresponded to 

FutureLogic's April 25 th Order and ordered 

twenty-four CCUSA printers from FutureLogic. 

35. On or about October 18, 1999, FutureLogic 

sent a letter and revised product quotation to Coca- 

Cola for the VM printer, also referred to as the 

"CCUSA" printer. 

36. The PSA-66-CC product designation in the 

October 18 th quote is an internal reference to the 

VM printer. 

37• The VM printer set forth in the October 18 u' 

letter with price quotations is the same Coca-Cola 

printer referred to by Mr. Meyerhofer in his first 

and second declarations to the PTO. 

38. The October 18 tll letter from Mr• 

Meyerhofer stated that "I am sending you a 

revised quotation that addresses the evolution of 

the CCUSA printer• This is the same printer as 

before, but includes the added options that were 

requested (note that we have assigned a new part 

number to the printer)•" The added options were 

65ram media size, a manual paper cutter/tear 

operation, a real-time clock calendar and a 

24VAC@4.5A input power handling capability• 

39. The October 18 m letter included higher 

prices for production unit quantity ($402.50 to 

$457.50) and phase I prototypes ($23,500) 

• 25 t_l r u h sam 

compared to the April ette, b t t e ,' e 

price ($850) for phase two prototype units• The 

price changes reflected the additional features 

requested by Coca-Cola. 

40. In November 1999, The Coca-Cola 

Company sent a purchase order to FutureLogic for 

the phase 1 and 2 VM printer prototypes. 

Subsequently, in April 2000, Coca-Cola 

Enterprises sent a purchase order for the phase 2 

prototypes because the latter Coca-Cola company 

| -A012 7- 

134:22. 


15; Rounds Decl. q[ 22, 

Meyerhofer Tr. 1.26:1- 

127:6. 

Rounds Decl. 1I 15, Exhibit 

16 at p. 143. 

Rounds Decl. I[ 22, 


133:18. 



37:15, 44:8-22• 

Rounds Decl. 1115, Exhibit 

i 6 at p. 143. 

Rounds Decl. I[ 115, Exhibit 

16 at pp. 144-45. Rounds 

Decl. 1[ 12, Exhibit 11 at pp. 

137-38. 

Rounds Decl. q[ ! 5, Exhibit 

16 at p. 143. 

Rounds Decl. II 22, 

Meyerhofer Tr. 137: 19- 

143:5; Rounds Decl. ¢][14, 

Exhibit 15 (reference to 

Coca-Cola Enterprises). 

-7- Case No. CV 10-7678-JFW-DTB 

Nanoptix, lnc.'s Statement of Uncontrovcrted Facts and Conclusions of Law

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)-cv-07678-JFW-DTB Document 56 Filed 09/28fll Page 8 of 11 Page ID #:908 

was operating the units in the field trial. 

41. By March 10, 2000, FutureLogic had 

produced at least fifteen VM printers. 

42. After receipt of Coca-Cola's purchase order, 

on or about April 14, 2000, FutureLogic shipped 

the 24 VM Printers to Coca-Cola. Invoices for 

these units were issued by FutureLogic on April 

17, 18 and 20, 2000, respectively, to Coca-Cola. 

43. FutureLogic was not privy to the locations 

or the models of the vending machines in which 

Coca-Cola installed the printers for use in the 

field. 

44. Coca-Cola placed the 24 VM printers at 

locations throughout Cincinnati, and FutureLogic 

was not present when Coca-Cola installed the 

units in the field for use by customers of its 

vending machines. 

45. On August 15, 2000, Coca-Cola stated that 

"...FLI's agreement was fulfilled with Coke upon 

delivery of the Beta printers..." 

46. The VM printers were still in use as of 

February 15,200l and Coca-Cola indicated that 

the field test had been successful. 

47. Out of the 24 VM printers provided to 

Coca-Cola, Coca-Cola returned only two or three 

printers to FutureLogic for repair or replacement. 

Conclusion of Law 

48. Under 35 U.S.C. § 102(b), "A person shall 

be entided to a patent unless...the invention was 

on sale or in public use in this country more than 

one year prior to the date of the application for 

patent in the United States." 

49. The filing date for the '855 Patent is March 

29, 2002. The "critical date" for the '855 Patent is 

therefore May 29, 2001 and any on sale or public 

use activity in the United States prior to that date 

invalidates the '855 Patent. 


Meyerhofer Tr. 44:7-46:21 ; 


at p. 104. 



140:6, 143:7-17; Rounds 

Decl. q[ 16, Exhibit 17. 

Rounds Decl. _[ 17, Exhibit 

18. 

Rounds Decl. c][22, 


39:21. 

Rounds Decl., _ 18-19, 

Exhibits 19 and 20; Rounds 


143:19-145: ! 9. 


21. 

Rounds Decl. tl[ 21, Exhibit 

22. 


Meyerhofer Tr. 174:12-20. 

Citation 

35 U.S.C, § 102(b). 

Rounds Decl. q[ 3, Exhibit 2, 

atp. 1. 

See Statement of 

uncontroverted Facts and 

Conclusions of Law 

- 8 - Case No. CV 10-7678-JF'W-DTB 

Nanoplix, lnc.'s Statement of Unconffoverled Facts and Conclusions of Law 

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)-cv-O7678-JFW-DTB Document 56 Filed 09/28tll Page 9 of 11 Page ID #:909 

50. liltis Nanoptix' burden to prove the '855 

Patent invalid under 35 U.S.C. § 102(b) by clear 

and convincing evidence. 

51. The on sale bar applies when two conditions 

are satisfied: First the product must be the 

subject of a commercial offer for sale...Second, 

the invention must be ready for patenting. 

52. The condition of reading for patenting may 

be satisfied in at least two ways: by proof of 

reduction to practice betbre the critical date; or by 

proof that prior to the critical date the inventor had 

prepared drawings or other descriptions of the 

invention that were sufficiently specific to enable 

a person skilled in the art to practice the invention. 

53. The Supreme Court's "ready for patenting" 

test in Pfa.[J; applies to the public use bar under § 

102(b). Thus, if the invention is in public use and 

ready for patenting prior to the critical date it is 

invalid under § 102(b). 

54. It is undisputed that the claimed invention 

of the '855 Patent was ready for patenting prior to 

the critical date. FutureLogic avers that the 

claimed invention was reduced to practice by 

January 21,2008. 

55. The claimed invention was the subject of a 

commercial offer for sale on April 25 and October 

18, 1999. 

56. FutureLogic sold 24 VM printers which 

embodied the claimed invention to Coca-Cola for 

public use at various locations in Cincinnati, Ohio. 

57. The transaction with Coca-Cola was not for 

purposes of experimentation. Once the claimed 

invention is reduced to practice, there can be no 

experimental use negation. Moreover, once there 

("Facts") 1[ 20; 35 U.S.C. § 

102(b). 

Micros_ Coq_. v, i4i Lt. 

Partnership, __ U.S. , 

131 S. Ct. 2238, 2245-2247, 

180 L. Ed 131 (2011.); 

Clock Spring v. 

Wrapmaster, Inc., 560 F.3d 

1317, 11325 (Fed. Cir. 

2009). 

P.faff v. Wells Electronics, 

Inc., 525 U.S. 55, 67-68 

(1998). 

Pfaff_ 525 U.S. at 67-68. 

lnv#rogen Corp. v. Biocrest 

Mfg., 424 F.3d 1374, 1379 

(Fed. Cir. 2005); Clock 

Spring, 560 F.3d at 1327. 

Facts _1[ 9-14, 30. 

Facts _1[ 31-32, 34-40. 

Facts I[I[ 40-44. 

Facts q[ 54; Allen Eng'g 

Corp. v. Bartell Indus., Inc., 

299 F.3d 1336, 1354 (Fed. 

Cir. 2002); Clock Spring, 


Nanoptix, lnc.'s Statement 0f Unco.qtrovened Facts and Conclusions of Law 

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:10-cv-07678-JFW-DTB Document 56 Filed 09/28/11 Page 10 of 11 Page ID 

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has been a commercial offer, there can be no 


58. After reducing its claimed invention to 

practice, FutureLogic had no control (or 

involvement) with Coca-Cola's field testing of the 

claimed invention nor were customers aware of 

the testing, negating any notion of experimental 

use. 

59. An invention is in public use if it is shown 

or used by an individual other than the inventor 

under no limitation, restriction or obligation of 

confidentiality. 

60. Coca-Cola had no limitation, restriction or 

obligation of confidentiality in its purchase of the 

prototypes from FutureLogic. 

560 F.3d at 1327, note 8. 

Atlanta Attachment 

Company v, Leggett & 

Platt, Incorporated, 516 

F.3d 1361, 1366 (Fed. Cir. 

2008). 

Facts _q[ 41-47; 

Electromotive Div. of Gen. 

Motors v. Transp. Sys. Div. 

of Gen. Elec. Co., 417 F.3d 

1203, 1214-15 (Fed. Cir. 

2005); Atlanta Attachment, 

516 F.3d at 1366. 

Am. Seating Co. w USSC 

Group, hzc., 514 F.3d 1262, 

1267 (Fed. Cir. 2009). 

Facts qlC][27, 42-46. 




WATSON ROUNDS 



Attorneys for Nanoptix, Inc. 

- 10 - Case No, CV 10-7678-JFW-DTB 

Nanoplix, Inc.'s Statement of Unconlroverled Facts and Conclusions of Law 

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:10-cv-07678-JFW-DTB Document 56 Filed 09/28/11 Page 11 of 11 Page ID 

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Pursuant to Fed. R. Civ. P. 5(b), [ certify that I am an employee of Watson Rounds, and 

that on this date, a copy of the foregoing NANOPTIX, INC.'S STATEMENT OF 

UNCONTROVERTED FACTS AND CONCLUSIONS OF LAW 

INSUPPORT OF MOTION FORSUMMARY JUDGMENT OF 

INVALIDITY REGARDING THE '855 PATENT has been served upon the counsel 

of record registered in this matter via the District of Califonlia's ECF Procedure. 



- l l - Case No. CV 10-7678-JFW-DTB 

Nanoptix, Inc.'s St_ltemenl of Unconuoverled Facts and Conclusions of Law 

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:10-cv-O7678-JFW-DTB Document 57 Filed 09/28/11 Page 1 of 8 Page ID #:912 



WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 


E-Mail: ayowell @ watsonrou nds.com 



CISLOn_ ' THOMAS LLP 



Telephone: (310)451-0647 

Facsimile: (3110) 394-4477 

E-Mail: dan@cJslo.com 


Attorneys for DefendantCounterclaimant Nanoptix, hw. 


V. 




Declaration of 

Michael Rounds 




-A0132- 

-1- 

Case No. 2: 10-CV-7678-JFW (DTB) 

DECLARATION OF MICHAEL D. 

ROUNDS IN SUPPORT OF 

DEFENDANT'S MOTION FOR 

SUMMARY JUDGMENT 




Pre-Trlal Conference: 12/16/11 

Trial Date: 1/10/12

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:10-cv-07678-JFW-DTB Document 57 Filed 09/28/11 Page 2 of 8 Page ID #:913 

I, Michael D. Rounds, do hereby declare and state: 

I. I am lead u'ial counsel for Defendant Nanoptix, Inc. and am licensed to 

practice in the states of California and Nevada. I am familiar with the 

requirements of authentication in the Federal Rules of Evidence, the Ninth Circuit, 

the Central District of California and this Court's Scheduling Order, Document 

Nos. 26 and 38. This declaration is based upon my personal knowledge. 

2. Auached as Exhibit 1 is a true and correct copy of an excerpt from the 

report of FutureLogic Inc.'s ("FutureLogic") expert witness, Stanley Hendryx, 

which was served upon my law firm by FutureLogic's counsel on September 6, 

2011. 

3. Attached as Exhibit 2 is a true and conect copy of United States Patent 

No. 7,594,855 ("'855 Patent") that was attached to Plaintiff FutureLogic, Inc.'s 

Complaint in this action. Mr. Mark Meyerbofer, the inventor of the '855 Patent, 

confirmed in FutureLogic's deposition that this was the '855 Patent. Meyerhofer 

Tr. 17:16-25. 

4. Attached as Exhibit 3 are true and correct copies of excerpts from the file 

history of the '855 Patent, which was obtained and downloaded under my direction 

and control on March 10, 2011 from the United States Patent Office website, 

uspto.gov, where prosecution records for United States patents are ordinarily kept. 

Mr. Meyerhofer confirmed in FutureLogic's deposition that the declarations 

included in these excerpts are his declarations submitted to the United States Patent 

Declaration of -2- 


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Office ("PTO") during prosecution of the '855 Patent. Meyerhofer Tr. 19:20-20:8, 

35:16-20, 84:4-16. 

5. Attached as Exhibit 4 is a true and correct copy of the Fed. R. Civ. P. 

30(b)(6) deposition notice that Nanoptix served upon FutureLogic in this action. 

Mr. Meyerhofer was the designated corporate representative for FutureLogic on 

topic numbers 1 and 2 (conception). Meyerhofer Tr. 16: 13-17: 13. 

6. Attached as Exhibit 5 are true and correct color copies of the exhibits that 

were attached to Mr. Meyerhofer's declarations in Exhibit 3 and submitted to the 

PTO during prosecution of the '855 Patent. See Meyerhofer Tr. 35:22-36:6. These 

copies were produced to Nanoptix by FutureLogic in discovery in this case and bear 

the Bates numbers FUT00007710-7716. 

7. Attached as Exhibit 6 is a true and correct copy of a March 7, 1997 letter 

from Mr. Meyerhofer to Dave Uland that was produced to Nanoptix by FutureLogic 

in discovery and bears the Bates number FL0022026, and was confirmed by Mr. 

Meyerhofer as his letter at FutureLogic's deposition. Meyerhofer Tr. 104:6-10, 

105:1-24. 

8. Attached as Exhibit 7 is a true and correct copy of a March 20, 1997 non- 

disclosure agreement between FutureLogic and The Coca-Cola Company produced 

by FutureLogic to Nanoptix in discovery and bearing the Bates number 

FUT00078769. This document was not produced until August 4, 2011, one week 

after the FutureLogic depositions were completed on July 27 and 28, 2011. 



-A0134-

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However, the existence of a "Coke NDA" was confirmed by Mr. Meyerhofer at the 

FutureLogic depositions. Meyerhofer Tr. 94:1-95:13. 

9. Attached as Exhibit 8 is a true and correct copy of a March 3l, 1997 

non-disclosure agreement between FutureLogic and The Coca-Cola Company 

produced by FutureLogic to Nanoptix in discovery and bearing the Bates numbers 

FUT00078767-68. This document was not produced until August 4, 2011, one 

week after the FutureLogic depositions were completed on July 27 and 28, 2011. 

However, the existence of a "Coke NDA" was confirmed by Mr. Meyerhofer at the 

FutureLogic depositions. Meyerhofer Tr. 94:1-95:13. 

10. Attached as Exhibit 9 is a true and correct copy of a document entitled 

"Kiosk Thermal Printer..." that bears the caption "Interleave Systems, 

Inc .... Printout Date: April 17, 1997." This document was produced by 

FutureLogic in discovery with the Bates numbers FL0022027-42, and was 

confirmed by Mr. Meyerhofer as an Interleave Systems document at his deposition. 


11. Attached as Exhibit 10 is a true and correct copy of FutureLogic's 

response and supplemental responses to Nanoptix's Interrogatory No. 3 with 

verification that was served upon Nanoptix by FutureLogic in this action. 

12. Attached as Exhibit 11 is a true and correct copy of an April 25, 1999 

Letter with attachments from Mr. Meyerhofer to James Davis at The Coca-Cola 

Company produced by FutureLogic to Nanoptix in discovery with the Bates 



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Case ._ 10-cv-07678-JFW-DTB Document 57 Filed 09/28/11 Page 5 of 8 Page ID #:916 

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numbers FL0020967-70, and was confirmed by Mr. Meyerhofer as his letter at the 

FutureLogic deposition. Meyerhofer Tr. 119:5-120::14. 

13. Attached as Exhibits 12, 13 and 14 are true and correct copies of May 

3, May 18 and June 15, 1999 letters from Mr. Meyerhofer to The Coca-Cola 

Company (and others) produced by FutureLogic to Nanoptix in discovery as Bates 

numbers FL0020982, FL002983 and FL0021874. Mr. Meyerhofer confirmed that 

he was the author of these documents at his deposition. Meyerhofer Tr. 133:24- 

134:22. 

14. Attached as Exhibit 15 is a true and correct copy of a July 16, 1999 

letter from Mr. Simmy Ahluwalia to Mr. Meyerhofer with the caption "Coca-Cola 

USA Operations" on the upper left-hand side of the letter produced by FutureLogic 

in discovery as Bates number FUT000371 i 6. Mr. Meyerhofer confirmed that his 

letter was responding to his April 25th letter (Exhibit 11). Meyerhofer Tr. 126:1- 

20. 

15. Attached as Exhibit 16 is a true and correct copy of an October 18, 

1999 letter and attachments from Mr. Meyerhofer to Simmy Ahluwalia at the Coca- 

Cola Company produced by FutureLogic to Nanoptix in discovery as Bates 

numbers FL0023292-94. Mr. Meyerhofer confirmed that he was the author of this 

letter at the FutureLogic deposition. Meyerhofer Tr. 127:9-22. 

16. Attached as Exhibit 17 is a true and correct copy of a document 

entitled "FutureLogic Shipping Kit Checklist" dated April 14, 2000 that was 



-A0136-

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:10-cv-07678-JFW-DTB Document 57 Filed 09/28/11 Page 6 of 8 Page tD #:917 

produced by FutureLogic to Nanoptix in discovery as Bates number FL00020979. 

Mr. Meyerhofer confirmed that the document reflected the 24 units that were 

shipped to Coca-Cola at FutureLogic's deposition. Meyerhofer Tr. 143:7-17. 

17. Attached as Exhibit 18 is a true and correct copy of an invoice record 

that was produced by FutureLogic to Nanoptix in discovery as Bates numbers 

FL0354686-89. The invoice numbers in question are 1735, 1736 and 1738. 

18. Attached as Exhibit 19 is a true and correct copy of a document 

entitled "Detailed Agenda for Coupon Printer Field Test Week of 4/17" on the first 

page that was produced by FutureLogic in discovery as Bates numbers FL0021204- 

25. Mr. Meyerhofer confirmed that this document reflected the various locations 

that the VM printers were installed at for at least the first week of the field trial. 


19. Attached as Exhibit 20 is a true and correct of a May 9, 2000 email 

that was forwarded by Simmy Ahluwalia of The Coca-Cola Company to Scott 

Shimmin at scottshimmin@futurelogicinc.com and Mr. Meyerhofer at 

mark.meyerhofer@futurelogicinc.com that was produced by FutureLogic to 

Nanoptix in discovery with the Bates number FL0023327-28. 

20. Attached as Exhibit 21 is a true and correct copy of an August 15, 

2000 email from Simmy Ahluwalia of The Coca-Cola Company to Scott Shimmin 

at scottshimmin@futurelogicinc.com with a copy to Mark Meyerhofer at 

mark.meyerhofer@futurelogicinc.com that produced by FutureLogic to Nanoptix in 



-A0137- 

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discovery as Bates number FL0020624. 

21. Attached as Exhibit 22 is a true and correct copy of a February 15, 

2001 email from Dave Uland to Mark and Eric Meyerhofer of FutureLogic that was 

produced by FutureLogic to Nanoptix as Bates number FL0002923. 

22. Attached hereto are true and correct copies of excerpts from the 

deposition transcripts of Mark Meyerhofer of FutureLogic which have been cited to 

in this declaration, the Statement of Uncontroverted Facts and Conclusions of Law, 

and/or Defendant's [Proposed] Statement of Decision. The Court Reporter's 

certifications are included at the end of the excerpts. 

I declare under penalty of perjury that the foregoing is true and correct to the 

best of my knowledge. 

DATED: September 28, 20 II /s/ Michael D. Rounds 

Michael D. Rounds 



-A0138-

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Rounds, and that on this date, a copy of the foregoing DECLARATION OF 

MICHAEL D. ROUNDS IN SUPPORT OF DEFENDANT'S MOTION FOR 

SUMMARY JUDGMENT has been served upon the following counsel of record 

registered in this matter via the District of California's ECF Procedure. 





-A0139- 

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;ase 2:10-cv-O7678-JFW-DTB Document 57-1 Filed 09/28tll Page 1 of 2 Page ID 

#:920 

26. Promotional printers may store templates in their internal processor 

memory, in which case only the variable data needs to be sent, including which 

template to use, to print a voucher or coupon. Alternatively, template definitions 

may be sent to the printer as part of a print request, along with the variable data. 

Stored templates are typically used to print vouchers, because of their limited 

variety. The dynamic template definition technique is well suited for printing 

coupons, because of the wide variety of coupons. A cache of coupon template 

definitions for a promotional campaign can be downloaded from a promotional 

controller and temporarily stored in the printer processor's memory to streamline 

coupon printing for the duration of the campaign, 

27. With promotional coupon printing, casino operators can print 

promotional coupons using the same printer that also prints the gaming vouchers. 

These promotional coupons may be based on data received from the gaming 

machine controller, as well as infonnation received from a promotional server on a 

casino's gaining machine network. 

28. Promotional coupon printers used in gaming machines are subject to 

careful regulatory scrutiny by each government jurisdiction in which the printer is 

sold, to assure an enor-free operation. (Eric Meyerhofer, telephone conversation). 

Because obtaining regulatory approval is expensive and time consuming for printer 

manufacturers, printer manufacturers may create software that can be compiled 

flexibly for different printer products and that needs regulatory approval only once. 

Therefore, while there may be numerous variations of the firmware as compiled, 

they are based on the same source code compiled differently. 

III. SUMMARY OF OPINIONS 

29. Based on the documents and information I have reviewed, observation 

of operation and structure of the exemplar products provided, as well as my 

background, training, and experience, I have reached the following opinions: 

e For the reasons set forth in paragraphs V.A and APPENDIX A of this 

Report, I have concluded that N-anoptix's PayCheck 2 printer infringes 

IO 

00001 

Nanoptix' Summary Judgment Exhibit No. 1 

-A0140- 

EXPERT REPORT OF 

STANLEY A. ItENDRYX

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Case 2:10-cv-O7678-JFW-DTB Document 57-1 Filed 09/28/11 Page 2 of 2 Page ID 

#:921 

claims 1, 2, 3, 4, 5, 6, 36, 37, 38, 71, 72, 73, 74, 75, 76, 78, 79, 83, 84 of 

the '855 Patent, 

• For the reasons set forth in paragraphs V.B and APPENDIX A of this 

Report, I have concluded tliat Nanoptix s Pay_Check 3 printer infringes 

claims 1, 2, 3, 4, 5, 6, 36, 37, 38, 71, 72, 73, 74, 75, 76, 78, 79, 83, 84 of 

the '855 Patent. 

• For the reasons set forth in pal"agraphs V.C and APPENDIX A of this 

Report, I have concluded tlaat Nanoptix s PayCheck 4 printer infringes 

clanns 1, 2, 4, 5, 6, 36, 37_ 71, 72, 73, 74, 75,76, 78, 79, 83, 84 of the 

855 Patent, to the extent _t uses software version 2.8 or later and has 

serial and USB ports,. 

o For the reasons set forth in paragraphs V.D and APPENDIX A of this 

Report, I have concluded that N-an0ptix's PayCheck Slim printer 

infringes claims 1, 2, 4, 5, 6, 36, 37, 71, 72, 73, 74, 75, 76, 78, 79, 83, 84 

of the '855 Patent. 

• For the reasons set forth in paragraphs V.E and APPENDIX A of this 

Report, I have concluded that Nanoptix s PayCheck Inverted printer 

infringes claims 1, 2.4, 5, 6, 36, 37, 71, 72, 73, 74, 75, 76, 78, 79, 83, 84 

of the '855 Patent. " 

30. My opinions and the bases for them are explained in more detail in the 

paragraphs that follow. 

IV. THE ACCUSED NANOPTIX PRINTERS INFRINGE THE 

ASSERTED CLAIMS 

31. I have been asked to analyze whether the following Nanoptix printers 

infringe the claims of the '855 Patent: Nanoptix's PayCheck 2, PayCheck 3, 

PayCheck 4, PayCheck Slim, and PayCheck Inverted (collectively, "the accused 

Nanoptix printers"). In connection with my analysis, I reviewed (among other 

things) technical manuals for the accused Nanoptix printers, deposition testimony 

of Nanoptix's witnesses, a video of a May 25,2011 inspection of the accused 

Nanoptix printers, a video from Nanoptix demonstrating the dual-port operation of 

PayCheck 1 printer, FutureLogic's Requests for Admission to Nanoptix and 

Nanoptix's responses thereto, and source code for the accused Nanoptix printers. I 

also physically inspected and personally operated a PayCheck 3 printer and a 

PayCheck 4 printer to confirm that they meet the limitations of the claims of the 

'855 Patent. 

11 

00002 


-A0141 - 

EXPERT REPORT OF 

STANLEY A. HENDRYX 

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Case 2:10-cv-07678-J FW -DTB 

o2) United S at.es Patent 

Meyerhofer 

(54) METHOD AND APPARATUS FOR GAMhNG 


(75) hwcntor: Mark Meyerhofet', La Canada, CA (US) 

(73) Assignee: i_'utureLogle, in¢,,Gleadale, CA(US) 

( * ) Notice: Subject to ,_ay disclaimer, the term of this 

patent is exte*_ded or adjusted under 35 

U.S.C. 154(b) hy 765 days. 

(21) Appl.No.: 101495,112 

(22) Filed: Mar. 31, 2003 

(65) Prior Publication Data 

(co) 

US 20_4/0095604 AI May 20, 2004 

Related U_q. Application Data 

Provisional 

29. 2OO2. 

application No. 60/369,097, filed on Mar. 

(51) lot, Ch 

A63F 1.1_o (2006,01) 

A63F 13/08 (2006.O1) 

GO6F _]00 (2l)06.01) 

GO6F 9/02 (2006.01) : 

A631:bW4 (200&01 ) 

(52) U.S. CI ........................... 463/42; 358/1A 5_ 4(_/I 6; 

463/40; 463/1; 463125; 705114; Y05/I; 700/91 

(58) Field of Classification Search ....... 35g/1.15-1.18, 

358/I.1 ; 463/25, 16, l, 29, 36, 39-43; 70_I 4; 

710/1|, 17; 235/375,381_ 700/231,232: 

221/1, _ 7-10 

See applieaiion file for ¢omplett: _earch hlst,:cy. 

(56) References Cited 

U.S. PATENT DOCUMENTS 

4,723,212 A 2,'1988 OffciaL 

(Ctm6nued) 

a_a. 

Document 57-2 Filed 09/28/11 Page 1 of 19 Page ID 

#:922 

IUnU IIIUIIIU IlMUnlUn$1@mHII 

US007594855B2 

EP 

(In) Patent No.: US 7,594,855 B2 .. 

(453Date of Patent: Sup. 29, 2009 

FQREIGN I'ATE_rr[x)cu_t, rrs 

0173835 .A2' 3;1986 

(Continued) 

OTHER PUBI.ICATIONS 

Faauelo#¢, Inc.. "Heavy Dilly DolI_ Bill Size Db'o_! Thermal 

Kiosk Printer Ugx's M._uM". CopydgJ312000. 

(Continued) 

Pdmary Exomlner-.Twyler L Haskiaa 

Jxslstant Examiner--Chad Dickeff.on 

C_4) Atla_qO;.4geat, ,)r Fir_t--Fit_utriek, Celia. Harper & 

Scinto 

(57) ABSTRACT 

00003 


-A0142- 

A method nad apparatus for a gaming promotional printer for 

_L+.¢within _ cashless elmhled ginning machine are disclosed. 

A gaming promotional printer Includes a coupon databatm 

d_crihia B n stack a|'coupoas dmt are s_'eifled ash38 a Iom- 

platebascd _ouponlng printer hmguage, A coupon is selected 

for oration and issued to the player b_ed on n matrix of 

cram-hosed triggers involving theto_ o¢ paraarolers known 

to the gaming promotional printer ditectly or sttpplied by 

master promotional controller. Triggers may include the time 

of day_ the date or mntamt era cash.out voucher to be i_ued 

to uplayer, the din'alien ofp|ay on a gaming machine, _tplayer 

classiflcatioe, the amount of mm_'y or e_udits added to a 

game, or a mta_n freq_e.cy of coupon i._nanc¢ having 

sntisfledany or all ofth_ afo_'meatloned t,_¢tors, Thagmaln 8 

promotional printer may further ia_lede th_ abifity to store nil 

of the coupon-% trigger condition.%a_d _'}ated infommtJon 

reaidenl in the 8aming promolional primer in a rmn-'volatile 

fashion thus enabling u host syst,_m to dow_txad a ptx_mo- 

Ilotm| etwimnment into the gamin8 promadomal printer 

which will run. pmmotlonal campais0s on Ix:hel fofthe hosthtg 

syaem. 

84 Claims, 9 Drawing Sheets 

NAN00019

Case 2:10-cv-O7678-JFW-DTB Document57-2 Filed09/28/11 Page2 of 19 

#:923 

u,s. P,_I'F2,¢I"DOCIIMt]/4"I'S 

4.910.672 A _q990 Offel at. 

5.075.87,1 A {2/1991 $to,-t'ese_aL 

$,256,$63 A |_19_r3 Fr,q_.onetal. 

$.612,868 A 3/1997 OffetaL 

5,$16,918 A 1(_1998 Kel|ycta{. 

$,909,6T$ A 6'1999 GreSoly 

5.943.241 A * 8/}999 N}¢ho|=etal ............... 700_32 

5.982,997 A {V1999 S/on_elaL 

6,6L_.344 A " Ix2000 Kdlyel nl .................... 463t16 

6.048,269 A 4_20_0 13rims el al .................... 463125 

6,327,044 B{ IZ'200| $_¢gut 

6,394.907 B! 5t2002 Rc_.e 

6.415,34! BL 7t2002 Fty. Sr.ttat. 

6.493,104 Bl 12/2002 Cwmer¢lal .............. 358/135 

6.511,377 B| * It2003 W©i_m .......................... 463/25 

6,57,_,090 BI 612003 V|ermenuelaL 

6,612,984 B.I 9/2003 Kin, II ....................... 600/300 

6,620,046 112 9;2003 Rcwce 

US 7,594,855 B2 

Page 2 

6,923,721 B2 " 8/2005 

6,924,903 B2* 8/2005 

6,990,392 BI * 1/201_ 

7,_08.32U 1{7 * 3/200_ 

--_02/003497"/ AI" .aj2002 

2002/0077901 At" _L_0I}_ 

Z002/0107065 At * 8/2002 

200_'01112[0 AI* ,%2002 

2002_0113124 AI* 8/2002 

2003/001351_t AI * h'200J 

2603/001352? A1 * 1/2003 

2003/0148812 A.I. _' 8/2003 

2_03/01f,6739 At'* 10/2003 

Lu¢inno a al ................ 463124 

B:ook..t ¢t td............... 35gq.15 

Melaet ¢t al ............... 700/242 

lT_e el M.................... 463/'25 

Burns et al .................... 463/25 

.......................... 705/14 

Rowe .......................... 463/20 

Lu¢ia:_ et al ................ 463/29 

Me-/m/ao let et ,,t ......... 23_t454 

Rowe .......................... 463/20 

Row,: et al ................... 463;42 

Paul sen el _1................ 463/42 

Paul _:.n et el ................. 463/25 

_'ff_0,1/005.36ftl AI * 3/2004 Iordala el el. ,.. .............. 463/20 

FOREIGN PATF.NT DOCUMENTS 

JP 11253609 A * 9/1999 

OTTII_ R PUI3LICA'I'IONS 

6.647,43? B2 I 1/2003 Ack.emum et al, 

Fum,do_c, h_.. "_:mto_ and. Tcchnjcian. Mar.ua1". Cop_i_ht 

6,862.$75 Bi* :1/2005 Aallil_t_l_J ................. "705/14 2003, 

6,892,182 BI* _Q005 Roweetal .................... 705/14 

6.896,fi I_ B2' $2005 Benoy a al ................... 463/25 *_cited by examiner 

00004 

Nanoptix' Summary Judgment Exhibit No 2 

-A0143- 

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Case 2:10-cv-O7678-JFW-DTB Document 57-2 Filed 09/28/11 Page 3 of 19 

#:924 

U.S. _n_ $ep. 29, 2009 Sheet I of 9 US 7,594,855 B2 

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#:925 

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U.S. •Patent Sep. Z9, 2009 Sheet 2 of 9 US 7,594,855 B2 

00006 

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Case 2:lO-cv-O7678-JFW-DTB Document 57-2 Filed 09/28/11 Page 5 of 19 Page ID 

#:926 

U.S. Patent Sep. Z9, 2009 S||eel 3 of 9 

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00007 

Nanoptix'Summa_ Judgment ExhibitNo. 2 

-A0146- 

US 7,594,855 B2 

NAN00023

Case 2:10-cv-07678-JFW-DTB Document 57-2 Filed 09/28/11 Page 6 of 19 Page tD 

#:927 

U.S. F_tent Sep. 29, 2009 Sheet 4 of 9 US 7,594,855 B2 

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Case 2:10-cv-07678-JFW-DTB Document 57-2 Filed 09/28/11 Page 7 of 19 

#:928 


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#:932 

U.So Pa_e_n_ Sep, 29, 2009 Slleet 9 of 9 Us 7,594,855 B2 

00013 


-A0152- 

Page ID 

NAN00029


#:933 

METHOD AND APPAltA'I'US FOR GAMING 

1 


CROSS-REFFJLF2qCE TO RELATED 

APPLICATION 

"l.his application claims the benefil of U.S. Provisional 

Pnteol Application No. 60/369,097. filed Mar. 29, 2002, the 

colic.sis of which are hereby incorpommd by refcrat_o as if 

[hlly stated herein. 

BACKGROUND OF THE INVENTION 

US 7,594,855 B2 

2 

txpfipmeol already installed within a cashless enabled gaming 

machine system for the puqmse nr supporting casMess gaming 

vouchers. 

SUMMARY OF'I'ItE INVENTION 

In one aspect of the invention, a method of printing a 

promotional coupon ia a gami_l, etwironment includes 

receiving conpoo data by a gaming pronmdonal printer in a 

cashless _sblod game front a pronmtln_l control/or via a 

conmmnicnttons network. ']'he cot.spa o data includes a catspen 

da_dption written In a template definition language, "the 

gat_ing promotional prln tar _hen g_.qleratcs the o_Upon using 

'l'hjs hwanlinn relates gencrMly 

morn specificaily to gaming prlnters 

to gaming 

performing 

prinrens m_d 

promotlonal 

variable data and the coupon template in _pons¢ to a trigger. 

Is 

In loathes asp_t of tie invention, tle variable data in 

cnepon println$, r_dved by the gaming promotiormI printer from the pronto- 

" tlonal controller via the commtmicatlans no, work. In this 

The gaming macldne manutb.ct_ing industry providesa aspect, the promotional controller generates the trigger and 

variety ofgamlns machines lbr the amusemant of gambling tr'dnsmit stt_ trigger to thegamtng promotional ptlnt_vla the 

players. An exemplary g.-mfing machine is a slot machina. A 2o communications network. 

slot machine is an electronleehanlcal game wherein chnac¢ or In a_uther aspect o f the invemlnn, the coupe ndnta In.e.inth:s 

the skill o fa player detennltg::/the oumomo ofthe game. Slot trlgger omatrol pammetem and tie tdgger is generated by the 

u'mchlaes are mually lbund in casinos or other more informal 

gamin S _tablisie_cnts. garMng promotional pt_or using the _g g,er control param- 

Otalting meclfina nittmofnctvrers have more recenlly intro- 

dac,.x| easMe_s ei_ahled gamh_ machines to tho market ond 

those have begun to fled wld¢ acc*._tan_n in the gaming 

lndL_try. Cashl_,t enabled gaming ms.lees are su tmmnd 

because they can ¢oada¢l flnanaial cxeha ng_._ asinga mixttee 

of tmdidomd currencies end vouchers.'I_plcally, a cashless 

e_hlc'd gaming machine has a gaming printer Io produce 

vouchers am1 a bill a_aptor ties supports aatolamflc reading 

of vouchers. To camrdhmte tim _tivities ofnmhlpk_ tatshlesa 

onablad gaming machines, one or more cashk_ e_xablecl 

gamins machines may be el_treainally conplcd to a cashless 

eneb/cd gan_og ntachine system _ot controls the cashless 

operations ore cashless elk_bledgaming machine. 

V_q2_ a player cashes oat usinga cashlnst: o_mbled coning 

machine coupled tne cashless enabled g_ning machine ayetent, 

the cashl_s enablc, d gaming machine signals the syw, mx 

nad tim system may demmdne the type ofpoy out presented to 

theplayer. L'MperMingon the size ofthopsyont, lhecashMss 

enabled _onln 8 m_chtae system may cause tie cashless 

enahhd gaminS machi_ to pres.._t c_)il_ in _o traditional 

method c,f a slot mnehina, or the cashinss _nbled gaming 

machine system may cause a Coning prinmr in tie _shioss 

cnabltxlgaming machine to prodtme a voncherfor the vnlueof 

thepay out,Thevoucher may then be red_.ated his variety of 

ways. For example, the voucher may berco_emed for cash at 

o caaideds engenrused with another casld_s enabledgmuing 

maeMna. In oak'rto tLso the voncl_.riu a cashJess enabled 

gaming machine, the voucher in iosetacd imo a hill _ceptor of 

argnht_ cashless cnabk.d _ming machine ut e participafmg 

casino and the casMess enubl¢_ gaming raachinesyetam r¢c- 

Ogn]_s die rancho4", r_ents thn vo_her_ and places an 

appropriate amount of playing c rndits on the cashless'enabled 

gamins machine. 

0 ver the last two years, cashless enahlad gaming machines 

have round on Mereasing eccaptance and u_¢ in the gantiug 

indaslt'y with playt:rs who enjoy the speed ofplay and ea._ o f 

truttsportMg their ,.,,'innings arnold the,:asi_)and the casinos 

who have reali_,_d sigeif_tnt labor savings in the form of 

r_tmcd _in bopper reloads in tie 8am_, aixd an increase in 

_wcnun h.x-ame of the sp_,d of play. "/'his increasing acceptanc_ 

pra_icaUy gnarumees a wide installed basc of natworked 

ganu.._with captiVe player audlcnansfor issunaccof 

coupons aM promotimml tickets using generally the same 

clefs and lr/ggar data. 'lag: trigger &tin nmy Inoinda a dale,a 

2s time ofday, a fa.xlueocy of issuance nfd_e cat, pea, or a date 

of play by a player era gtm'thlg utachinn. 

In nnether aspect oi'the invention, tie gaming promotional 

printer is ihrthcr coupled to a g,Caltiug machine controlh:r and 

the trigger dam is recei_'d by the gamlagpromotlonalprinter 

30 from a gaming maddae conlroUer, "[]zc trigger dam stay 

incinda n player id_titier, an umntmt of otoacy in play on a 

gamins machine, a dttration ore curreut session ufplay era 

gaming machine, n cash.in of a player or a cash.out of a 

player. 

ss In mother sspt_t oi'dm invention, coupon t_suanea data is 

stored by the gaming poems.lanai printer attd the ooupon 

ts_aoea data Is transmitted by the gatnlng promotional 

primer 1othe prentotional ennh'ollor via the cotonun6c._tions 

netwozk. 

4a In anml_'r a:;Ig'¢t of the inventlon, o promotional controllar 

transmits coupon data to a gaming pmmolinnal printer vla a 

_ommutdeafiooa network wRh the o_ut_oa da_ inc|ud_g e 

ex.tupon tomplatn. "1_ promntlotnd controller transmits varl. 

aMe data and trigger data to the gaming promotional printer 

via the commuaicatior_ netwoAAn response to the tr_smis. 

sloth the gaming promotional la"inter go.rares a conpon 

using the coupon teanplate and the variable dam. 

In another aspect of tie iuvemion, the gmnins promotio_ml 

pdnter gores coupon issna_g:e data and tie prunmtional con- 

SO troller rt_cives the coupon issuance data by the promotional 

comroller from the _ming promotional printer via the commenicatio_ 

network. 

In annther nsfs."¢4of tie invention, a gaming proutotional 

printer comprises o procos_r atgl a memoD' toup|ed to the. 

s._ processor, The mea_oo' ha_ stored program sarong'ties* 

e'xo_table by the processor where the proem Instructions 

include receiving coupon data h_du/_ing a coupon template 

from u promotional controller via n enauntmicntinra nat- 

walk. 3.'heprogram instruct/arts fat the gamins promotional 

60 primer MSO include h_troctiotle ;['or go.rating a coupon 

us|ns vorinb/¢ data aM fl_e cou[um arapl_to in response to a 

trigger. 

In another aspt._t of the Inventinn, a protnotional controller 

inclades a processor tmd a menmry coupled to the processor. 

6S Program Saran:aliens for implementing the realm'u* nf a promotional 

controller are _ored in the memo O' .'_ ere e_ecntable 

by the proccssor. "['he program instructions incl_e: 

00014 


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#:934 

3 

tmnsmhling coupon dmn m u _mfi ng pmmotiorml printer via 

a_mmu_iendons network wherein the coupoa data iaclede_ 

US %594,855 B2 

a coupu.a template; transmfitlng variable data to the gaining 

proraatlmm[ pdtaer via the communications aetwodq and 

trnn.,lmitdng trigger data to flze gaming protoodor.d printer ._ 

whereby tl_ gaming pmmolional printer generates o co_pop, 

using the coupon template mid the variable data in r_pons¢ to 

_o triggtY, data. 

BR_F DESCRIPTION OF THE DRAWINGS is 

T_se _nd other features, e_pects, and advanhages of the 

present inventionwilt bacom¢ better tmderstood with regard 

to the following description, nppcoded claims, aRd accompa- 

win8 drawings where: tS 

FIO. 1 is block diagram illustrating a gamh_g enviwnment 

employing couponis:amneein accorclcocewithau exemplary 

embodiment of [he p,m_n( invention, 

FiG, 2 l_adeplorer diagt'amera _oupoa is_u|ngsyS_eto 

L,xacco 'Rhmca wiflx na exemplary emboditoent of the present 20 

invention; 

FIG. 3 is an filusttotionofa coupon inehMing logical fields 

d_seribed ia a lemplate based primer )_ng'tmgein a¢¢ordenca 

with art egctrtplary emboditoeat of the pr¢6ont }nventiou: 

FIG. 4 is nbloek diagnun of coupon _mpinta field ele- 25 

meats stored partially realdem in n promotional gaming 

printer and partially supplied by a m_sler promotional controllerst 

thetime of printand issue in accordnnoe withan 

exemplary embtgfialeto oflhe present i_wcolion; 

FIG. 5 is a block diagram o f an exeanplarg coupon "s_nak" 30 

and logicaltriggernmtrix r_idera in a gaming promotional 

prlnter in accordance wlth an caemplary embodiment of [he 

present t_¢cotion; 

FIG. 6 iS a process flow diagrdm ofa cmlpon generation 

prooe_ in accordance with an exemplary embodimen, t of the _s 

_rescnt inve_qfion; 

F/G, 7 is a ,_queuco diagram eta cmtpon generating pro* 

¢_s ht a_cot0_nce with an cxen_laty cn[hodinu._zt of the 

p_at lovcolion; 

FIG. 8 ]a 0a atchltcctore diagram of_n exemplary In'onto- qn 

do_| gaming print_ in a_ot_nca with an exemplary 

embodimeto el'tim present invention; ned 

FIG, 9 is an aw.hit¢ctu m diagram of an exemplary master 

pronmdmtal controller in accordance with an exemplary 

embudlmeul of the present invcntion. 4s 

D_FAILED DESCRIP'I'ION 

FIG, I is blink diagram illustrating a gaming enviroamcot 

employing couponlng in accordance with an exemplary so 

embodiment of the presem Invcodou. A player L00 uses a 

¢_hless enabled gomiag nmehine 102 to phy n gambling 

game or game of skill. As the player phlys tl_e game, a In_ter 

promotional c_oarrofier 104 coupled to nae or more twshiess 

enabled gaming maclfiz_'s thrush a ¢Omznnaicatlon_ net- S5 

work f 06 _ggem the generation nfproretoionalcoupons log 

for 1Jse by the player. The ptomafiunal e0upoas am generated 

by a promotional gaming printer 109 included In u ca_'dms 

eratbled ga_ng toachine. The mostc'r promotional controller 

can tither be a _rd_roller z_-twork t_nig_ted to one or more 6o 

gaming promolionnl primers, a coauullor within u _sh!_s 

enabh,'d gaming machine or gaming promotional prhdet, or 

an intelligent routing mtd ng.mngement &.wice for one ormore 

g_ _motlozml privies, In one embodiment of a master 

promotional controller,the master promotional controller6_ 

directs tl_ prontofional a_tivity Of the gaming promotional 

printers via dir&t promotional coupon rcq_-.r_s. In another 

4 

mnbodiment of n mas_er promodotud controller, the mssler 

promotional controller uses a eashlass enabled gaming 

machine's gaming promodonel primer 1o store protooflonal 

coupon dahabases cod triggers. 

Ghte(: a ptotootienal Coupon has been issued by a gaming 

pmmotionol printer. I11¢ promotim_l coul_m may be 

redeetoed witha haman operator or cashier 11O_or zedeesru_'J 

automatically _rou_a e artothe_ redemption device, such as a 

bill acccvtar in ttoo[h_ cashless enobled gaming to_.hhto 

11,?,,or redeemed at a kiosk 114 which is .'1ol a same but 

provides some other form of automatic interface far apromodonal 

coupon holder, 

In oac embodimeta urn n_,ster promotional controller, 1he 

toa_er promotional controller is coupled to the redemption 

devices. In _mther embodimen! of an minter promotional 

controller, a non-gemu kloskor casino i_rso_w, el may or may 

_t interface hackto thetoaster promotional _nntmllerwhca 

redeeming a promotional couptm, ]Ii_mlafit_ rehdivc _q 

eouponfngactlvt_ is exeheagedwith thom_ter promotional 

coutroller_ the netresult beingthegaming'pmmotioa_ prim- 

er_ fitting into the system a_ distribot_,_ iutelfigem sub-u_its. 

sig_flcaatly off-leading the maslet promotional controller's 

real time servicing requimm_ls nnd uvoidh_g nep, vork bandwidd_ 

issues associated with live st_zL,_ng of pmmofionat 

coupons during e mlativdy short cash-ou time window. 

In one gaming eovimtonent employing eoupo_fing in 

na¢ordalsce with oa exemplary emhoditoeat of the pre_nt 

invention, each gatolng promotional priatez in. the gaming 

environment/'.as a uniq.nu address or [&_atlfier .so limta popu- 

htlon of g_m_ing proroofionut p_ate_ on the _.wc_k _ 

add_ssed hswltale or htdividually lot"promodocol purposes, 

FIG. 2 is a deploytrtent diagram era couponing systole ia 

accordance with aa r_,_mplary embodiment of the prasem 

invention. In a couponing system, a master pnwaotiorml con. 

troller 104 is coupled Io one ormoro cashless naabled gaming 

machines, as illustrated by cashlesu enabled gaming machine 

102, d_ough u coau'nualcetioas network 106 by coupling tea 

ginning promotional printer 109 included In the cashless 

.eambled gaming macldne.'il_ master protootional controller 

_s programmable and inaludes mast_ promotional eonu'oller 

pmgranmdug insLmetlu_ 2_1 cent rolling _e maste_ p¢on_tloaal 

controlh.'_ operations ir_h:dh_g commneieadons with 

the ginning prumoflonal prtuter. 

in one gaming promotional printer in a¢ct_Jaace with an 

e:,_empiary embodimem of the preseUl inv_toiun, e stand. 

alone gaming promotional printer includes all ofl_ notes- 

saw pt_w-essiog c_pahilities, mnramy, _d garohlg proton: 

tional priatcr programming inst_etinas 209 sanded to W" 

fon'a promotional COUponlng oporatiom for d_ ,_sl_¢sa 

er_bhxl gaming mad'fine,In od_¢r emh_liments of gaming 

protoodaltal priaga_, a gaming protootioanl prlntet is crc_tdd 

by coupllag a promotional module 210 (o a convenlimml 

gaming printer, eaabtlng [he gaming printer to _actien as a 

gamh_g promotional printer,A stand alone gaming promotional 

printer or a gmulng promot[oml _iuter created from a 

convcodnaal gaming printer coupled to a promotional mod- 

ulearahereinafter termed n "gaming proamtiona| prhn,_. 

master ptomotio_ud t_ntroller may be coupled to a 

game controller 204 iacludexl ia II_ cashiess enabled gaml/_g 

machine. By coupling to a game cmltraller, tha master promofienal 

oomroilerl_y rocelve inE_rmslioa liom the game 

controller about the gaming operafl.ons of the cashless 

e.nabled gaming atachine separotely froto the gaming protonrio.col 

printer p_sling op_mfiona. 

00015 


-A0154- 

The casldess enabled gaming meehina may also i_:ind_ a 

bill sceeptor 206 coupled to the game controller. A _shless 

Page ID 

NAN00031

• Case 2:10-cv-07678-JFW-DTB Document 57-2 Filed 09/28/11 Page 14 of 19 

#:935 

enabled gaming machine nses'a bill accepter for redemption 

5 

of promotinnal cotrpons and acceplnace of vonahecs or cash. 

In ol._ration, the master pmmotinnal controller treJmmita 

US 7,594,855 B2 

packets of variable data or coupon data describing a promotional 

databme to the Catalog promotional printer. "{_o oon- s 

terns of the promotional database include dcscdplions of a 

plurally of promotlonal coupons, cash vonahere, edvertisemooR: 

or other mltieoments which are hereinafter collectively 

referred to as "CoUpons". '["he 8aqli_ pmmotiotml printer 

receives the pnnnotional database mad stores the pmmotinnal l0 

database in the _anl_ promotional printm"s local memory. 

The gaming promotional pdnrer also stores speelficationa 

ofttow t_oprim the coUpons in ;Is local matnory,'f'he specifications 

of the coupons ate stored as templates written in a 

template based primer language. This allows the COUl'_as to 

he pro-defined, formntled, and stored In the gomtng pmmo- 

tiottal printer completely or partially for laler recall. 

Upon receptiun of a triggcw dam signal from either the 

master promotiotml controller or the gtmle controller, the. 

gaming promotional psiuter refereacc_ real parses the proton- _.o 

tim_l database and coupon templgte_ to generate and issue 

promotimm] coupons or tickets printed on paper media. The 

paper media may be n'_l specifically for the purpose of 

8enemtln8 promotional coupons, or the paper media nmy be 

used for the putpnae of prlath;*8 p@. out vooel.a:rs assock_led. 2S 

with cashless 8am'm_. 

I;1Q. 3 is aniliustrationnfa coupott incl':ling logical fields 

describcd in a template based printer laagtmgein accmxlanco 

with all exemplaW ombodhuonl of fifo present Inveotinm hi 

thin example, Ocoupon n_y 300 Inelnde four types of&to 30 

fields: text flalda, such a sl_t fi_ld 302 i bareede fa.qds, suchos 

a g_ning promofit'tmM prfr_er. A template may inchkie a 

photo}try offielda in combinntlon, resultin S in a pasterxq_ style 

pdnted coupon. A plurality of templates describing different 

typos of coupons amy be stored in a gunning promodooal ._o 

primer supporting a rich cnuponing envLrotanent. 

The actual value or data for each of the fields described in 

a cut, on template may or tnay rtorbe inaluded in the template 

itself; l'or e_.an pie, a template may include a harcodu field [or 

prioting a hawede 310. However, the actual value of the 4s 

base.ode Is tmnsmhted to n gaming ptoemtlonal prtaterat the 

time a coupon Is geoc'._ted us|t_ the eoupoft inmpiste. In thin 

way, e coupon nmyhtrve fields that Include slatic data, such as 

graphic 312 in a graphic field, or dynamic dam, such'as the 

name era Igutieular 9arran 314 in a text field. In this way. :_0 

customlzedoaulmas may be pfinled by a gamingpmmotintml 

printer without transfcrrblg la_c amounts of data thrrmgb a 

commtmlcatitms natwo.,k coupling a ,,,,,,,,,,,,,,,,,,,_ming promotional 

prlnter to a masler promotional controller. 

hi addifio_ dala thai b dsed to track usage ofcoupons amy _5 

be included in a coupon. For example, a bancade field or a t_.'xt 

field may bo used to print a bar¢ode value or text string 

uniquelyidentifying n coupon, in this way, a _pmaing prmdslonal 

printer cre_te_ au image of a hareode or harcodes, 

clltwactots or marke that may be read by a cashlc_,'s ermbled _t 

gaming me_hlna bill acoeptor on the same 0r another casbh_s 

enabled gamhzg mnc.hino, nllmvin 8 automat|e n_eplanee of 

coupom Inlo a cashlesa ¢mab} ed gaming system in a casit_ or 

nauthar related casino property, 

A coupon templam includes a phtrallty of command SS 

stfmg_. "Each command stri_ con forais to the following syntax: 

dclmlterl I 

Ildefimet er,comment 

where: 

6 

delintiter_a delimRer chemcter 

-=conmtand Idnat liter letter 

'.=fields which include information _latire 

to the conunnad 

I_Pipe character. This nerves as the delimher betweca data 

fiet& it;*a conmmnd, 

;=Semi-colon. This is a conmmra field designator. 

A template delinin_, a coupon adh_._ to following syntax: 

ddimite_ template_crad_hr> I < t ld> ! l 

I I ... I*r pr#n> 

ts Iddimiler 

where: 

_Template dimension on a dotline axis.ln dots. 

='l_upla_ dlmeasinnin do_s ia the poper axis. 

.,, I l 

t I 1 I I 

l I i I I .,:pr_att_ t 

.q_r data> lddlmter 

whwe: 

=printregion identifier. 

.¢_alg._mem>:qa_ot memory storage. 

_dot axi_ start positlm_ in dots. 

=p_er axls start position in dots, 

_xlut axis length of print regkin hx dols. 

=papgr nXia length of print region in dots. 

=Print object multiplier 2. For text. this repw- 

_nts a font height multiplier. For a barcode, it iedieale_ 

a wide bat width. 

._bjoet printing andbutcs. This ecalalus sp_l 

iastmnttom on how to no.at tile print objects within a 

print region 

=print region attributes. This couk_m SlX.-"oial 

Infatuations on hnadfiag of the print resion. A '0' iadieat_ 

text will be sam in a prim batch command- A ' I' 

indieat_ use textwhich follows in pr_data field for a 

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print rcgkm. A "2' indit:ates e prim _,km will auto 

inerement with ca cb cuu/_n in n batch. "lhe base wine is 

sto ntd in a w_data field. A '3' h'`dicutt_ nn auto-dantemeat 

prim regJort wl_.ch will auto-decremem with each 

coupon in a batch. The base vahm is stared In a pc_dam 

tidd. 


#:937 

9 

printer In sclem the lyl:¢, quan'tity, nnd fsequca_7 ofccupora 

to create m_ issue related to any of the triggers listed above, 

These ct_oR'ol parameters n_.ay operate separately or in combination 

with .each coupon in the database. Parmoetors that 

mayl_ used ira:lode: a tolal quantity of a coupon being isaued 

b_oro the coupon ts retired liom the ¢o_pon dot0ba_; a 

frequenCy 518 ofissuaneeol'a coupotl based on thunumber of 

occurrences of specified trigger events; a fsequency of issuance 

ofe coupon bn_d no random odds 520, such as otto in 

one hundred trig@.er events; a baokatp coupon or coupons 

should a porriou 'lar coupon fidl to print for lack ofsali_fylng 

its specified set of qtmlifiers; whether or m_t the coupon is 

/ssocd hosedonthetime the Itlggar oecorsed; uad whether the 

coupon is Issued based on the date the trigger accursed. 

In cue emhedimcml of gaming promatiu_ml printer, a real 

time clock electrotdc thwi_ is inehelod within the gaming 

pmmatlon_l printer for the pulposes of suppoflio 8 time 

dependnnt prometiornd ncdvity as dagerib..'d above. 

FIG. 6 is n pn,_as s flaw diagraar o l_ trigger matrix process 

in actmrdamen with one ex_mpin_ embodimant of the presout 

invention. A trigger tr_trix_ process 622 is USed by a gaming 

pmmefioual printer to determiou ifa coupon should be generated 

aad issued to a player, The trigger matrix prne_s 

r_elves (624) variable d_n front a waster promotio_l con- 

troller. 'l'he trilzger matrix proc1._s dolomfines (628) if the 

variable data Includes a coupon Ifigger inslrocttngthel_unin 8 

promod_mI printer to i_ou a enupom If so, the trigger matrix 

process selects (630) all nppmpliut,_ coupon to ksue from a 

coupon database $10. The trigger matrix process then goneratss 

(632) a coopOn 511 ttsitl 8.the _[e.cted co'apes template. 

lnaddifloth the trigger matrix pro¢css may usea portion of the 

variable dam r_¢eived from the nmater promolianal coolroller 

to customize the_a_upon wl_.l the coupon is generated. The 

ltiSgtw matrix process may then store (633) coopon is_unnco 

stadsdcal data (634) for Islet retrieval by the master promodoom 

_onlroiler. 

A lrisger matrix pr_rcess may also inidam issuance of a 

coupon even if tl_ master prnmoOonal controller does not 

trummit n trigger to the gamlngpronmtional priutc.r.3"o do so, 

the matrix trfgger process gets (6.15) _gger comrol parameters 

stored in the Ixomotinrml coupon datobas_ $10 that 

correspond to stored eoupoa templates In the promotioral 

coupon datnheze. The trigger mmrtx prooass then Eela (638) 

gaming machine attd othc'r inremnl data 636 unddetertaines 

(640) ira coupon shouldhe iasuod using the data and trisger 

control lYaruroeten, If the Itisger matrix precis detumlioas 

(642) I_l a o,_apon should be generated, the trigger nmlrix 

pmce_s issu_ e coupon as previously d_cribed, this time 

selecting n coupon mntplato using the _gger control pammc,,ters, 

"]'he gamin8 promodooal printer Is a feral-time devi_ 

meaning time il continuously pn_c_g_s i_0mln 8 Iriggerdmo 

and triggers, .As sudx t the tri$ger roatrix proc¢_ may be 

eoofisured as an oodles loop as indicated by the. slart loop 

644 and st_p Ioup 646 symbols, 

FIG. 7 is o sequence diagram of a coupon generating pn)eess 

in m:cordanco whir an exemplary m.nbodlm_at of the 

presem invantian.A msster pnmaotional controller 104 !ram- 

mits coupon or _lriahle data 600 to a gaming pronmdon_l 

printer 109.'['he gaming pmnmtional printer stor_ (602) the 

eoupoadata for later use by the ginning promotlonel printer lu 

prillling a coupon. As previously d_scrihod, tim coupon data 

n'my include coupon tempiat¢o, sets of dynamic and static 

variable date, _gg_ eonltol paramelu_, and entire promotiotml 

coupon databa_s. 

A gaming promotional ln_tor may resolve various triggers 

that inhlale 8ouerarion ofa coufmn f¢,r a player 108. The 

US 7,594,855 B2 

I0 

masler prnmatioual ¢ontrolh=" may mmsmit a promotional 

trigger (604) to the gamin& promoltmud printer. In reqmaso 

to the p_molional trigger, the gaming, promotional printer 

ganerate0 o coupon 606 for use by the player. The ginning 

s promofionnlp_merlhenatores(60_)stndslicald_mabont_e 

Just generated coupo_ The gaming promotioml printer m_y 

also resolve a gaming machine trigger 610 from n game 

controller 204 in a cadfless _tabled gaming maehi_. In 

response to the gaming nmebhe trigger, the _nming promola 

tionol printer ge_mtes o coupon 610 for u_ by the player, 

The gamln_ promotionalprintgr th_ stores (612) statisdcal 

data nheut the just g_emted _tupon. The gaming promo- 

6anal priltler may also generate (614) an internM trigger on ItS 

own sudl thet'the gaming promotional printer generates a 

t_ coupon 616 for u_ by the player. The gaming pmmnth'm_| 

printer then stores (618) Matintical dam about the just goner- 

|tied e, uupon, 

PeHodiouIly, or at the mqu¢_,'t of the master promndo_l 

controller, _ gaming promt_iOual printer may transmit the 

20 saved coupon stotisllcal data to the master promotional _m- 

troller fornnalysls _ other types ofprouessing.'lha coupon 

tracking or statistical data may include dalails such a_ quantlti_ 

of spcoi£¢ types of triggers rc¢c4ved, qmmtlties off, ash 

of coupon issued, and the tlm_ alu:l dates when _L_Crs 

ls wore received attd coupons ',veto Issued. 

in a gaming prontotiooul printar Io accordause with an 

_mplno' amhediraout of the present invention, the 8tuning 

pmmotiooul printc"caccepts p_lofiooul dataM._ loads and 

tmoafen statlstiool data with thenmster promotional contralto 

ler either tlu_u_ah e main commun}eatioo port used for _of 

marly $|goa]ing pay oat vntteher_ ia the gSlOe, Or th_qlgh u_ 

auxiliary pan allmaio$ the 2_mIn 8 promotional prlnler's prometional 

actlvitiesmbe coadneled in series or in parallel with 

the gaming preraottonal printw's c_h-ont _o_cber printing 

)S Ibneltoos within the _shless enabled ginning machine. 

FIG'. 8 is an _ehitcetore dingrmu of an exemplary prolatotional 

gaming printer itt avcordence with aa exemplary 

nmbndiment of the present invention. A goufing p'mmotional 

40 printer 109 includes a prc_-ssor 701 operatively coupled vin 

a system bus 702 to a main memot7 704. The processor is also 

coupled to a storage device 708 via e storage co_tmller 706 

and the bus. The storage da'vlen includes stored progrsm 

inactions 724 and data 726 sneh as coupon variable dala, 

45 coupon templates, and coupon tril_ger eantml par,_eterr, Iu 

operation, the program instructions implemoudng o gaming 

pmmot_tml printer are storcd cm the storage device tmtil the 

p_e_sor reldaves the program instructions and stores tMm 

in the main memory. The proc_ssur thin_ec_es thecam- 

so pmer program Instructions stored in the main metr_ry _d 

operates on the data stored hz the storage device to hnplement 

the Ymmre:_ o£a g"amin8 promotional p.Hateras dc_orihed 

above. 

The pa,xessor is _t'ther ennpled to a printer mechanism 

:_s 718 t hrongh n pfi atar contmll_ 716 via the bug In nptn'atioth 

theprocessor _xecntc_ the program imlr_ctions to gum:rate 

primer mechanism control slsaah_and kansmlts these slgnals 

to the primer meche_sm via thehus and printer eontmlla_ In 

t_aponso m the printer nzeelmntsm control slaoals, the printer 

an roechan/mn _inm coupons for use by a phyer. 

q'he pro¢_sor is further coupled m external input devines 

721 by an input device ¢onlsollor 720 via the boa. Exumpln 

input devices inulndo seusOrs thai the f/#ming promotional 

printer uses to datc'et proper prindn_ of a coupon by the 

es printer mccbanlsm, coupon printer Impcr detectors, _nd real 

tlm_ clocks. The processor reeelves input dovlee signals from 

tile Input devices vin the input devlou controller _ the bus 

00018 


-A0157- 

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.Case 2:10-cv-07678-JFW-DTB Document 57-2 Filed 09/28/11 Page 17 of 19 

#:938 

11 

and us_ the input device signals to detect file state of tile 

g_tr_n 8 promotlon._ prtmer's environment. 

The processor is further coupled to a acixvork dcvien ")'14 

via a tletwork device controller 712 and tile bus, "['he process 

u_._ tb¢ net_ock devien to commm_re with othe_ prnccasing 

systems, such as a master promotional commller or a 

gaming machine controller aa previot_ly described. 

FIG. 9 Is an architecture dhgnan of an exemplery promotinllal 

alustat l_ronlntlolml control_r in _c¢ordanoe with an 

exempta D' ei_thodimem of the pres_m invnnlion. A mauler 

plomotional comroller im:Iod_ a pmcCs_r 901 operatively 

coupled via a system bus 902 to u main minnoW, 904, The 

processor la aim couplc-d to a slorage device 908 via a storage 

enetmller 906 and theban, htoponJtion, program inslraefiona 

924 implementing a master promodmml controller are stor_d 

an tl_ storage device until thu processor mtriew.,s t/to p_zn 

instruatinna and smrea them in the main memory. "_n pm- 

o_sor l[_n exeetuea the computer pn68mm instrueliorm 

aa'Jred in the nmtn m_annry m huplement the featan._ eta 

mest_r promothtml controller na described ebovu. 

"Ihe peocessor is further cotrpk._ to a network dcvten 914 

via a netWork device controller 912 and the bus. The pmcoss 

ust.....sthe netwod_ devico to cmrmmnle_tc with otheJ prt,_ess- 

in8 s'ystema, steh as a gaming promotional primer or a g_m- 

ins maehit_ eomroller as previously described. 

Althonghllfis invetaion l_ls bee_. described ia certain spa* 

eific embodiments, a'muy edditlon_l modlfi .c',,tions and vedatio_ 

would be apparent to those ekilhxl in the arl. It is the.m- 

fore to be ut,'derstood (hal thin invention may be practiced 

otherwise lima as specifically described. Thes, the presc_,t 

embedlmcata of the hxvatttinn should 1_ considered in all 

rostxmts as: illustrative and not restrictive, the scope of the 

Invention to be determined by any eiaJtna supported by this 

application and the clnhns" eqnlvulents rather than the faregoing 

deseript/on. 

Wlmt is claimed Is: 

'[. A promotional prhrter, eompfisiug: 

• a main eommunlctalen, pert £or oonplins the pruutotiotml 

printer to a machine coutrollertthe main commuaieatinn 

port adapted to receive voucher data from the maeldne 

_oalrollee. 

an auxiliary conurumicatlon port. separate li'om the main 

coamnanleation port, for enupling the pmnmtional 

prhtter to a promotional conlroll_, the anxillazy commmltcetlun 

tmrt ad_pted to ree eivc o.lupon data dire¢lly 

from tim 'promotinmd controller separately of thn 

tm_ehinc controller; and 

a procosaer adapted to: 

recolw the'voucher data from the maclfinc controller via 

the main communication port and generate e voucher 

•ualo$ the voucher data; and 

mcoive the coupon data from tile promotional controller 

via tl_ auxiliary communieatinn port- nnd generate a 

coupon usiu[g the enupoa data, 

2.'I'h¢ proutotio_l prater ofciaho It wherela d_ pme_tar 

is further adapted to conduct cnupordn_ aetivhi_ in serial 

wJlh voteheriag activities. 

_..Thepmmofional printer ofehim 1, wlrei'_in Ibe process_ 

b further _hpted to conduct eouponing ectivltles in pararid 

with voucberin Kactivid_. 

4. The promotional priut c* of l, wherein: 

the coupon data hml ud,-'s a coupon templma; am1 

the pro_smr is farther adopted to generate the coupon 

u_inB v.ad_blo data and rite coupon template. 

$. The premotional printer ofelaim 4, wherein tlm proces- 

sor Is further edapted to _.c¢ivn the variable data from the 

promotiotml comroller via the auxiliary enmmtmicetiert port. 

US 7,594,855 B2 

12 

6. The prommtotml printer of claim 4,wherein the pox:o's- 

so," is further adapted to reenive the v_able data from the 

machine controller via din main conmttm'teatien port. 

7. The p_modonal pdnre¢ of claim 4, wherein the proces- 

S sot Lsfurther adapted to generate the enetgm in response m a 

trigger. 

8. The pmmottotud palmer of claim 7, wht._in the prancesot 

is further adapted In receive the trigger from the maelfitm 

controller v_a the ntaln enmmmdeario_l _a. 

to 9, The pmmotiot_l pdnter of claim 7, wherein the procea- 

Sot iS further mkapted to tcseivo the trigger frtnn the pmmo- 

tio_l nantmller via the auxiliary commuaieation port. 

10. The promotional printer of claim 7. whcrala: 

the colrpon data taelmins trigger control parameters; and 

t _ the processor is further adapted to: 

receiv_ Irigger data; and 

genurale the trigger us[l_, the trigger control potemc_ers 

mid the trigger data. 

l l, 'l.'lmpromotional printer of cialm 10. wherein the pro.. 

Zo nestor is'ttnthur adapted to receive the trigger data from the 

promotlmml controller via the auxiliary eonunanication port. 

12. The p_molional priatar of clahn 10, wherein the processor 

is further adapted to m_ive the trigger data from the 

machine controller via the main cotomtmicatlon port. 

_S 13.'lhe promotional printer of elalm 10, whcrehl the trig- 

• aer dah"l he|odes a date. 

14. The protnotlonat printer of claim 1 O, whemht the trig- 

ger data includes a tlw._ of day. 

IS. The promotio_l primer of claim I 0, wherein _o trig- 

:tO ger data includea a frequency of is:_uanee o f dta coupon. 

! 6. The promotional printer of claim 10, wherein the trigger 

data includes a time of play by n play_- of a g,nming 

machine coramlled by the meehine controller. 

17, 'lhe promot|o_l ptlmex of claim 10, wheraln the trig- 

,'_s ger data inclndue a player ide_tifie/" ofn player ore g_ning 

mad_itm controlled bZ the nmehhe controller. 

18, The pmmotinnat, primer of claim 10, whemln the ti'ig- 

get data inchtd_s tm ammmt of moony in play on a l?_ming 

_._ nmchin.e controlled by dlo maehinu controller. 

19. The promodonnl printer of clalm 10, wherein the triggel" 

data includes e duration of a entreat aeaslan of play of a 

g.amiog n_ehim_ controlled by tim maehhle c'ontrollen 

20. The promotional prinler ofclalm 10, wherein the trig- 

ger data i_:ltMes a end-in ore player era ginning machine 

45 coatrolkat b,v the machine contronen 

2t. The pwmotlone| printer of chim 1 O,_herein the trigg_ 

th,aa inehidee e _sh-out of a player era gaming machine 

controlled hy the mechiae enntroller. 

So 22. The promodorLal printer of cintra 10_ wherein the trigget 

data includes an expiration date. 

23. "File promotional prMter of clidm 4, wherein the variahte 

d_ta laelud,_ a player Identification era plier ofu 

gamh_ machine contmllcgl by the machine controller. 

.s,,t 24. "l'h_ promotional printer of dahn 4, wh_ein the variable 

data Includes a gaming tr_,h'm e ;dendfieadon ofa gaming 

nmdaitm controlled by the machine commller. 

aS. The promotional p_ter of claim 4, wl_._eha the variable 

dam inalu&"s an expiration date., 

ea 26. The pmmotiottal primer of claim 4. whet_eln the _'ariable 

data i_ludes a bareodo. 

27. The proinotional printer of claim 4, wherein the variable 

data i_ludes an image. 

28. The promodo_l printer of claim 4, wherein the vafi- 

6.$ able data includes on bnnge ofn coupon. 

00019 


-A0158- 

29. The promotional prlntcr o fcbim 1, wherein the o_J pun 

is a promotional coupon for gtm&s. 

Page ID 

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#:939 

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3D.The protonlionelpfim_r'oFcinlml,wh.,minthecoupon 

is a pmmodbnal coupon !hra _ervice. 

31. The pmmotinna! primer of claim 1, whe_in the 

vouchei; is a voucher t_eemable ha gaming mm_bine. 

32. The pmmodonal printer or claim I, wherein du: 

voucher is a cagh-out voucher for a gamin 8 machine. 

33. The pmmot|onal printer of ¢inim 4, wherein the vari- 

able data includes n _ ime,go. 

34. The promotlccJ_| printer of qlatm 4, wherein the verl. 

able data |twinde* a graphic imago oFa coulgat. 

35. The promotio_l printer of ctalm 1, wh_cin the procensor 

is fin_,r adapted to transmit coupon is_oanae data to 

the promotional ¢oatmlk:r vla the a_ilisty ¢ommotdeation 

:port. 

36.A method of pr*mtiagcoupona bya promotional printer 

havinga main comamnicadoa port forcouplingthe pmnm- 

US 7,594,855 B2 

tlpanl,pfinter to a machh_e commll .er. the,main con_. units, 

tioh port _la#_l to'/_eivevou_er dma froh'the i/fichine 

coutmller for lalming n v_ucher,themethod comprising: 

mce]vingc6upOn datafrom a pmn_ti_nal conlroJlervla an 

e_xilia,'y communicdlinn pod g.pa_te from the alain 

_mmuakafion port,_o auxfllmycommuakot!on port 

adapted to receive the c_apon data diRetly from tha 

p_moflona[ controller m3d sepumtcJy of the m_hhm 

cmi_rolleq and 

printing a conpon by the pmmotlmml machi_ printer 

using tim coupon dsta. 

37.'I'he medmd of claim 36, further comprishg: 

reoeiving the voucherdam by the promotional printer from 

a gaming machine conLmllcd by the machine oOntmll_, 

via t]_ m_ln communication port; told 

printing the voucher by the proton!lanai printer using the 

vo_ch_ data in _l with generating the cou_n. 

:38, The r_hed.of clnlm 36, fnrthcr comprbing: 

re_ivlng the voubl_'dam by the pmmoti'onei printer from 

a gm_ng macHne controlled by the machine contmlle_ 

•¢l,q the mnia cmnmunicatiou port; and 

printingthevoue_rbythepmmolineal primer using the 

voucher data in p_rMiel with pr]mlng the oanpon. 

39, Tim method of claim 36, wherein the ¢onpon dam 

includes n coupo.a temphte, the method fi_rther comprising 

received fi'om a gaming ma_!fina cont,'mlled by the machine 

controller via the mum carom.unitarian port. 

42. "Ute me,hod of©him 39, lhrd_ compfislng priming 

the coupon ht r_lxmr_ to a _gger. 

43.'rho me, hod ofclalm 42, .fur_er comprlsla_ mc¢_ving 

tho trigger l_om a _mdng.machine _ontrullcd by tlmn_hine 

ccntm.llef via _a main.t:ommanie.,afitm port. 

44. The method of clara 42, fur&er comprisia 8 t_*ot.qv|ng 

the triSEct from t_ promotional controller vle tha auxiliary 

commented!inn pod, 

45, The _thod.of e._in_ 42, whpmin the coupon data 

hclodes trigger ¢on'.r_l pnrametem, the methed fro'!her comprising: 

receiving tfi_gSer'data; and 

pdndngthetdgger u fm8thetrigger control parameters and 

the, tri_ dam. 

46.q'Immeth:_d of claim 45,lhrthcr cmnprlsing rec_ving 

the trigger data from the pmmotinnel controller via the aux- 

Ilhry cotmmihkation port. 

14 

47. The method of claim-45, gut!her comprising r_alv'mg 

the trigger data from a g_mlng machine co_olled by the 

mechine c_ttmller via the main communication port. 

48. The mcthod of claim 45, wherein d_ Iri_d]er dam 

includes a date. 

49. The method of claim 45, wherein the trigger data 

includes a tflh_ of day. 

_0..Tl_ method Of chdm 45, wherein tim _gL_f dam 

includes e f_pmnay qfissu_mm of the _pon. 

to 51, The method of claim 45, wlmrein Ofo trigger data 

includes a time of play by a.pl_er era _mmg meeMne 

ccotrollcd by _e maotdne controller. 

52. The meth_ of elalm 45, wherein the _ggar dam 

inchldeg a player _eatifier. 

IS 53. The method of claim 45, wherein the _risgm" dam 

includes an amount ofmone_ in play on n ga_g machhm 

conlrollodby the l_c.hin_ controller." 

54, The _tethod Of eltiim '4_, Wbe_in the _r dma 

includes a duration of a onmmt _,salon.of play eta gandng 

:o madden conttolkM by the mac:hlna contml!ec 

55, :the _od ef claim 45, wherein the wiggcr data 

includes a cash.in ofe #aYer of a gamins mechlne comrolled 

by the machine controller. 

56. "Fee method of clahn 4_, wl_ela _e _gger dam 

include.s e ca._-ont of a pla'yea"of a gaming nmchi_a controlled 

by the mac_hm controller. 

57. The method of dalm 45. whemia fl_ trigger dam 

inctudes an explmUon date. 

_8. The meah_l of chim 39, wherdn 11_ variable data 

30 lnafude_ a player identification of a player of a gaming 

math'me controlled by the mnclfme coalmllec 

59. The metlu::d of claim 39, wherein the varlable dam 

Luclndes a 8tuning n_ctfitm identificetlon of a 8aming 

machine _n_ollcd by the mhchlne commller. 

3s 60, The'm_had of clahn 39, wh_01n the varlableda_a 

includaaan expirm'mn date. 

61. The method ofolain_ 39 t wherein the variable data 

im:lude'_'a hawo_. 

62. The method of cl,_lm 39, wherein rite variable data 

4o fitcindes on imago. 

6.% "rh¢ m_hod of claim 3_ wherein the variable data 

priming t_ coupon using verisble alma and the coupon lena- inclhd_J an Image eta coupon. 

. plate, 

64. _ method of claim 36, Wherein. the coupon is a 

40. "H_ method of clain139, whemln the variable datu is promotional coal?on for goods. 

received .from tl_ promotional commller via the nwd]_y 4S 6S. Tlie fixetl_ of claim 36, wh_ _ cm_on is a 

co nhmanlca fion "i.'3o rL 

pmamtional coupon for a sc..vtc_ 

41. The method of claim 39, whel_'in the variable data is- 66, The _hod of chim 36, wherein the _uchcr is a 

vouch_ redeenmble in n'8amlng math'me. 

so " 67. The method of c_lm 36_ wherein the voucher is a 

ca_h.-om vouche¢ for a gaming m_:hine. 

68. T_o method of c_tm 39, wherein the variabledala 

includesa graI_atc _ge. 

69. The method of c_int'39, wig.rein the variable data 

s_ |neiudlm a graphic image eta _upon, 

70. The method ofcla_ 36, _r_er comtsr_ng Irm_t_itring 

coupon lssnanc¢dam to the promotional conttolinr "via 

the a_illary commujficationport, 

7t.Apmmotlona_ printer, comprising: 

_e vo._¢her dam raceiving means for receiving vouch_ data 

from a m_chii_¢ co!rite!let; 

coupon data receivingmean_, separate fi'omthe wuuchet 

data receii, htg meam t for recelviflg r_upon data dk_dy 

frcm a pn_._an_l controller and separably of the 

_s _ con!roiled, 

prlntin_meaes forpr_dnga coupon u_ingthecoupondata 

m_d for prlmln8 a vonalua"u_:ingthe vodcher data. 

00020 


-A0159- 

Page ID 

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NAN00036 

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. Case 2:10-cv-07678-JFW-DTB Document 57-2 Filed 09/28/11 Page 19 of 19 

#:940 

15 

72. The I_OmotiOul printelol'elaim 71, wh_xla the cou- 

Imndate teceiVln 8 me'ms is .- auxiliary commtt_titm l_rl 

atul the ,voucher dala receivla 8 mares is a main communion- 

don poll. 

73. _ promotional prh_lef of claim 71, f_rther ¢omlnSs- 

iu8 vatlable data receivia$ means for receiving vadabte data 

for the coupon, whene'm _e printing mearts us_ die variable 

dula aud the coupon clara to' print the coupon. 

74. The promolio_l p_nler af¢lalm 73, wlten_ the vari- 

able data t"e_ivln 8 me.m_ is a main communicetlon port, 

75, "l_ae promotional prlnter of clalm 73, wherein llm v'_i- 

able data l'ecejvin 8 nanans t_ un auxiliary commlwJcation 

port. 

76.'l'he'p_nnol|oaal prinler ofdahn 73, wherein the vail* 

able data is received from a gum|aS n_htrte con!rolled by the 

raaelaine conlroller. 

77. The promotional primer of claim 73,wherein ihe vari- 

.pblo dam is rt_jv_cl from the promotiotm] controller. 

US 7,594,855 B2 

16 

78. "l'h_, promotional printer of daim 71, wherein the primtag 

means prims the coupon in t'es_nse to a _gger, the 

pmmotioasl pri.nter fitrther comprlsie8 triSger tecelvlng 

• means for teceJvin 8 the trisger. 

'79. The promolional printer ofolalm 78, whct'eia the ptomofiortal 

pdntet receiv_ the tri_er't_m the iiromotional 

eamtmller. 

80. The promotional printer el" cl_'t 78_ wherein the pro- 

motional printer teeeivna the IriSget from a gaming machine 

_0 c_lrolled by the mnekin'¢ eonttgl/er. 

81. _l'ko promotional primer of claim 71, wherein the coupan 

i5 a promotiot_l a0upo_ for goods. 

82.'l'bz promotional prhller of claim 71, wherein the co_ 

pan is a p_motiona| ccepml for a _lee. 

15 83. The pmn_tional printer of c/aim 71, wherein the 

'voucher is a voucher r_dccmable In a _ming m,'tchlne, 

84, "rim promolltuud printer of claim 71, where_ the 

vm_her is a eash.cJut voucher for a'g_mh3g m..'tehine. 

00021 


-A0160- 

Page ID 

NAN00037

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Case 2:10-cv-O7678-JFW-DTB Document 57-3 Filed 09/28/il Page 1 of 37 Page ID 

#:941 NAN04656 

REMARKS 

In the previous response in this application dated June 3, 2009, Applicant 

indicated that a supplemental declaration under 37 C.F.R. § 1.131 would be submitted under 

separate letter. That submission was inadvertently delayed and is now being submitted herewith. 

The contents and sufficiency of the supplemental declaration were discussed with 

the Examiner in a telephonic discussion prior to submission of the previous response dated 

June 3, 2009. During that discussion, the Examiner and Applicant's representative discussed the 

outstanding rejection under 35 U.S.C. § 102(b) and what additional information in the form of a 

supplemental declaration under 37 C.F.R. § 1.131, would be useful to the Examiner in 

determining the allowability of thepend'mg claims. Applicant submits that the supplemental 

declaration under 37 C.F.R. § t. 131 submitted herewith contains the additional information as 

discussed. 

-2- 

00022 


-A0161-

Case 2:10-cv-07678-J FW -DTB Document 57-3 

#:942 


3. I reoeived an undergraduate degree in Engineering from the 

University of California, Los Angeles (UCLA), specializing in electronics and computers. 



5. i am aware that the Office Action dated December 3, 2008 rejected 

all of the pending claims in the above-identified application under 35 U.S.C. § 102(b) 

based on an alleged public use, sale or offer to sale of the invention to which the claims are 

direetext. 

6. On or before December 19, 2000, FutureLogic entered into a co- 

development project with a soft drink manufacturer for a promotional eouponing system 

for use with vending machines. FutureLogie and the soft drink manufacturer shared the 

costs of the project which resulted in payments to FutureLogie to cover a part of 

FumreLogie's costs. During the project and for a period of time afterward, both 

FutureLogic and the soft drink manufacturer were subject to a mutual non-disclosure 

agreement regarding the project. 

7. As pEtrt of FutureLogic's contribution te the project, a number of 

prototype promotional printers having the features of the invention were constructed by 

Futtr(e. Logic for experimental use during the period of the project. A representative 

example of the prototype promotional printers as constructed was described in my two 

previous declarations under 37 C.F.R. § l. 13 l dated February 1I, 2008 and August 12, 

2008. 

-2- 

00023 

Nanoptix' Summary Judgment Exhibit Nol 3 

-A0162- 

NAN04659 

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#:943 

8. After being constructed, the prototype promotional printers were 

operated for a period of time by FutureLogie and the soft drink manufacturer as described 

in my previous declarations under 37 CFK § 1.131 dated February 11, 2008 and August 12, 

2008. The purpose of this operational period was to test the operation of the prototype 

promotional printers in vending machines, The test results were used to further refine the 

design of the prototype promotional printers. During this opexational period, the prototype 

promotional printers were only accessible by the technical personnel of FutureLogic and 

the soft drink manufacturer and were not accessible by the public. 

9. At the end of the project, a decision was made not to commercialize 

the prototype promotional printer design and none of the prototype promotional printers 

were sold nor were they offered for sale. 

10. 1 hereby declare that all statements made herein of my own 

knowledge are true and that all statements made on information and belief are believed to 




may jeopardize the validity of this application and any patent issuing th.m'eon. 

FCHS.WS 338742.2vI 

Oate _k rJy_rhofer )" 

-3- 

• 00024. 


-A0163- 

Page tD 

NAN04660

Case 2:10-cv-07678-JFW-DTB Document57-3 Filed09/28/11 Page4 of 37 Page ID 

#:944 NAN04667 

Application/Control Number: 10/405,112 

Art Unit: 2625 

DETAILED ACTION 

Response to Arguments 

1. Applicant's arguments, see page 4, filed 6/312009, with respect to the 102(b) 

rejections have been fully considered and are persuasive. The 102(b) rejection of the 

claims based upon a public use or sale of the invention has been withdrawn. 

Allowable Subject Matter 

2. Claims 82-152 and 154-166 are allowed over the prior art of record. 

3. The following is an examiner's statement of reasons for allowance: 

The present invention is directed a method and apparatus for a gaming environment 

with a gaming promotional printer containing both a main and auxiliary communication 

port. The main communication port is used to receive voucher data from a gaming 

Page 2 

machine controller and the auxiliary communication port is used to receive coupon data 

from the promotional controller in the gaming system. The Examiner applied the 

references of Rowe (USP 7008320), Rowe (2003/0013527), Nichols (USP 5943241) 

and Rowe (200210107065), but these references were overcome by the Appticant. 

Based on the response filed on 613/2009, the Examiner considered the arguments on 

page 4 persuasive. Since the prior art found that was most pertinent to the Applicant's 

invention was overcome and other art that was found was antedated by the applicant's 

provisional filing date, the claims are considered allowable over the prior art. 

Any comments considered necessary by applicant must be submitted no later 

than the payment of the issue fee and, to avoid processing delays, should preferably 

00025 

Nanoptix' Summary Judgment Extlibit No. 3 

-A0164- 

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#:945 NAN04686 



In re Application of: ) 

MARK MEYERHOFER ) 

Application No.: 10/405,112 ) 

Filed: March 31, 2003 ) 

For: METHOD AND APPARATUS ) 

FOR A GAMING 

PROMOTIONAL PRINTER ) 

Mail Stop RCE 

Commissioner for Paten_ 

P.O. Box 1450 

Alexandri_VA22313-1450 

Sir: 

Examiner:. C. Dickerson 


ltme 3, 2009 

RESPONSE TO OFFICEACTION 

AND 

,REQUESTFOR PERSONAL INTERVIEW 

SUBMITTEDWITHRCE 

This is in response to the Office Action dated December 3, 2008, the period 

for response having been extended to June 3, 2009. 

00026 


-A0165- 

CERTIFICATE OF EPS-W/_B TRANS/fflSS1ON 

I hereby ce_ that thl_ _poBdeneeis }wAngfiled elecaronleally by 

EPS-Web tt'ansrm_sion ¢o the Datte.d States Pamn_ Office cat 

Je4ae3_ 2009 

(Date of Tranl_mhsloa) 

Frank L. C|re_ Reg. No. 4:2,419 

(Name of Attorney for Apptiea_ 0 

/Fraalc Cite #42,4191 June 3, 2009 

Stgnam_ Date of Siguature


#:946 NAN04687 

REMARKS 

This application has been carefi_y reviewed in light of the Office Action dated 

December 3, 2008. Claims 82 to 152 and 154 to i66 are pending, of which Claims 82, 117 and 

154 are independent. Reconsideration and further examination are respectfuily requested. 

Claims 82 to 152 and 154 to 166 were rejected under 35 U.S.C. § 102(b) based on 

an aUeged public use or sale. Reconsideration and withdrawal of this rejection are respectfully 

requested. 

Initially, Applicant notes that, in making the rejection under 35 U.S.C. § 102(b), 

the Office Action failed to set forth aprimafacie case for either an alleged public use or an 

alleged offer for sale. (See M.P.E.P. 2133.03(a)). In regard to public use, the Office Action 

merely contended that Applicant's declaration under 37 C.F.R. § 1.131 "appears to suggest that 

the device was udlized for its purposes to print items Coincident with its use. The purpose of the 

invention is to provkle vouchers in a gaming environment or receipts to customers in a vending 

environment." (See Detailed Action, Section 5.) Applicant is uncertain how an appearance or a 

suggestion can be considered the factual basis for a rejection under 35 U.S.C. § I02(b). As such, 

it is impossible for Applicant to determine what facts form the basis for the rejection of the 

claims. However, for the purposes of advancing the application and providing a response to the 

current Office Action, Applicant understands the Office Action to contend that the present 

invention was allegedly either made accessible to the public or allegedly used eommerciaily 

before the critical date of March 29, 2001 because the promotional printer described in 

Applicant's previous declarations under 37 U.S.C. § 1.131 was used for its intended purpose, 

namely to generate printed items for financial transactions, including receipts and vouchers. (See 

M.P.E.P. § 2t33.03(a)I.) 

-2- 

00027 


-A0166-


#:947 NAN04688 

Furthermore, the Office Action appears to assert that FutureLogic, Inc. (the 

assignee of the present application) "has created products for use by other corporations" and that 

this fact alone is sufficient evidence to support the allegation that the present invention was sold 

or offered for sale prior to the critical date of March 29, 2001. (See Detailed Action, Secdon 6.). 

Applicant submits that whether FutureLogie, Inc. has or has not created products for use by other 

corporations is not at all relevant to determining whether or not the present invention was so]d or 

offered for sale before the critical date. Therefore, it is impossible f6r Applicant to determine 

what facts form the basis for this rejection or how Applicant is expected to respond to such an 

allegation. Nonetheless, and simply for the purposes of advancing the application and providing 

a response to the current Office Action, Applicant understands the Office Action to contend that" 

an alleged offer for sale of the present invention occun'ed before the critical date of March 29, 

2001 because of an alleged definite sale, or an alleged offer to sell of the promotional printer as 

described in Applicant's previous declarations under 37 U.S.C. § 1.131 before the critical date. 

(See M.P.E.P. § 2133,03(b)I.) 

Finally, the rejection 35 U.S.C. § 102(b) appears to be combined with a request 

for iJaformadon under 37 C.F.R, § 1.105. Specifically, the Office Action stated "(a)n issue of 

public use or on sale activity has been raised in this application, In order for the examiner to 

properly consider patentability of the claimed invention under 35 U.S.C. 102Co), additional 

information regarding this issue is required as follows:". After presenting a series of apparent 

interrogatories, the Office Action stated "Applicant is reminded that failure to fully reply to this 

requirement for information will result in a holding of abandonment." (See Detailed Action, 

Section 6, emphasis added.) However, it is not apparent from the request how the Applicant is to 

respond to such a request. Specifically, the apparent interrogatories appear to require Applicant 

-3- 

00028 


-A0167-


#: 948 NAN04689 

to provide answers that are conclusions of law or based on personal knowledge or belief rather 

than by submission of documents. Based on the foregoing and as best understood by Applicant, 

the request for information appears to have been made pursuant to 37 C.F.R. § 1.105(a)(1)(vii), 

namely, it is a request for "(i)dentification of any use of the claimed invention known to any of 

the inventors at the time the application was filed notwithstanding the date of the use." 

In accordance with Applicant' s understanding of the apparent request pursuant to 

37 C.F.R. § 1.105(a)(1)(vii), Applicant submits herewith, but under separate letter, a 

Supplemental Declaration under 37 C.F.R. § 1.131 in order to further clarify the circumstances 

under which the promotional printer described in Applicant's two previous Declarations under 37 

C.F.IL § 1.131 dated February 11, 2008 and August 12, 2008, was reduced to practice. 

Applicant submits that the addidona] information supplied in the Supplemental Declaration is 

responsive to the requesL 

Furthermore, and in accordance with Applicant's understanding of the rejection 

under 35 U.S.C. § 102Co), Applicant respectfully requests that the Examiner consider the 

additional information supplied in the Supplemental Declaratinn. Based on that additional 

information, Applicant submits that the present inyention was neither made accessible to the 

public, nor used.commercially, nor offered for sale or sold, before the critical date of March 29, 

2001. Accordingly, Applicant respecffuUy requests reconsideration and withdrawal of the 

rejection under 35 U.S.C. § 102(b). 

No other matters being raised, Applicant submits that the application is in 

condition for allowance and respeetfiflly requests same. 

-4- 

00029 


-A016 8- 

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#:949 NAN04690 

REQUEST FOR PERSONAL INTERVIEW 

Applicant believes the application is in condition for allowance. However, ff the 

Examiner does not share this view, Applicant requests that the Examiner conduct a telephonic 

interview with Applicant's representative regarding this case. If such an interview has not been 

conducted before the Examiner next takes up the case for consideration, Applicant respectfully 

requests that the Examiner contact Applicant's representative as indicated below. 

-5- 

00030 


-A0169-

Case 2:10-cv-O7678-JFW -DTB 

UN/TED STATESPATENT AND TRADEMARK OFRCE 

I0/405,[ 12 03/31/2003 

5514 7590 I_J03Z2008 

_A'rP, ICK CF.,LLA_R & SC'INTO 

30ROCKEFELLER PLAZA 

YORK, NY 10112 

Document 57-3 .Filed 09/28/11 Page 10 of 37 Page ID 

#:950 

NAN04742 

UNITED STATI_ DEFARTMENT OF COMMERCR 

United Sta_ Patent and Trademark 

_ COb_&_IONER FOK PKT6NT_ 

Ah:_adrh, VI_:_ 223L_1450 

l._oo_No, i _o,_,_oN.o. j 

03226.000105. 5028 

DI_ON, CHAD S 

[ MAIL DA_[_ i _YMODE ] 

12/03/'2008 PAPE& 

Please fred below and/or attached an Office communication concerning this application or proceeding. 

The time period for reply, if any, is set in the attached communication. 

PTOL-90A (Rcv. 04/07) 

00031 


-A0170- 

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Case 2:10-cv-O7678-JFW-DTB Document 57-3 Filed 09/28/11 Page 1t of 37 Page ID 

#:951 NAN04743 

Application No. Applicant(s) 

101405,112 MEYERHOFER, MARK 

Office Action Summary Examiner Art Unit 

CHAD DICKERSON 2625 

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address - 

Period for Reply 

Status 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE _3MONTH(S) OR THIRTY (30) DAYS, 

WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION. 

- Extens_ona of time may be available under the prov{sicns of 37 CFR 1.136(a). th no event, however, may a reply be timely filed 

after SIX (5) MONTHS horn the maldng date of this communication, 

- If NO period for rep_y is spec'd_ed above, the i'naxlmum statutory pedod wlL( apply and will exp[re SIX (6) MONTHS here the maglng date of this communicaUon, 

- Failure to reply vAthle the set or exter_ded period for reply V_lt by statute, cau_ the application to become ABANDONED (35 U.S.C. § 133). 

Any reply received by the Off-ca leter than three months after the mailing date of this communica_on, even if _'nety filed, may reduce any 

earned patent term adjustment. See 37 CFR 1,7C4(b), 

1)[_ Responsive to communication(s) filed on 14 Auqust 2008. 

2a)_ This action is FINAL. 2b)F] This action is non-finaL 

3)1"-I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parle Quay/e, 1935 C.D. 11,453 e.G. 213. 

Disposition of Claims 

4)_] Claim(s) 82-152 and 154-168 is/are pending in the application. 

4a) Of the above claim(s) __ is/are withdrawn from consideration. 

5)F-I Claim(s)__ is/are allowed. 

6)_:_ Claim(s) 82-152 and 154-166 is/are rejected. 

7)1--1 Claim(s) __ is/are objected to. 

8)]-1 Claim(s) __ are subject to restriction and/or election requirement. 

Application Papers 

9)[-1 The specification is objected to by the Examiner. 

10)_;_ The drawing(s) filed on 31 March 2003/slate: a)E] accepted or b)_;_] objected to by the Examiner. 

Applicant may not request that any obJecLionto the drawing(s) be hold in abeyance. See 37 CFR 1.85(a). 

Replacement drawing sheet(a) including the correction is required ifthe drawing(s) is objected to. See 37 CFR 1.121(d). 

11)I--I The oath or declaraUon is objected to by the Examiner. Note the attached Office Action or form PTO-152. 

Priority under 35 U.S.C, § 119 

12)[-'] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). 

Attachment(e) 

a)r-I All b)E_] Some * c)E] None of: 

1.]-'] Certified copies of the priority documents have been received. 

2.[-1 Certified copies of the priority documents have been received in Application No. 

3.1-7 Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 

• See the attached detailed Office action for a list of the certified copies not received. 

1) [] Noticeof ReferencesCited(PTO-892) 

2) [] Noticeof Draftsperson'sPatent DrawingReview (PTO.948) 

3) [] InformationDisclosure Statement(s)(PTOIeBI08) 

Paper No(s)/Ma]l Datefiled5/16/2008. 

U.S. PaLantand Trad Dm=rk Offk:= 

PTOL-326(Roy. 08-06) Office Action Summary 

00032 


-A0171- 

4) [] InterviewSummary (PTO413) 

Paper No(s)/Ma_Date.. 

5) [] Notice of InformalPatentApplication 

e)[] otho_.___. 

Part ofPaper NoJMail Date20081118


#:952 NAN04745 I 

Application/Control Number: 10/405,112 Page 3 


5. Claims 82-152 and 154-166 rejected under 35 U.S.C. 102(b) based upon a 

public use or sale of the invention. In the broad statement in the declaration, it appears 

to suggest that the device was utilized for its purposes to print items coincident with its 

use. The purpose of the invention is to provide vouchers in e gaming environment or 

receipts to customers in a vending environment. Therefore, based on this bi'oad 

statement, the Examiner concluded that the invention has been used in a manner that 

coincides with "public use". However, a proper response to the questions below can 

further clarify if the invention was "on sale" or in "pubic use". 

6. An issue of public use or on sale activity has been raised in this application. In 

order for the examiner to properly consider patentability of the claimed invention under 

35 U.S.C. 102(b), additional information regarding this issue is required as follows: 

On the third page of the declaration, the inventor stated that "After being built, the 

promotional pnnter was placed into operation and used for its intended purpose....". 

Based on the above statement, the Examiner would like ask for more clarification as to 

the period in which the invention was in operation. When the invention was placed into 

operation, was the invention on display to anyone other than the inventor? Was the use 

of the invention strictly for testing purposes? Was the operation of the invention in a 

place where the public could view the structural features of the claimed invention while 

i 

in operation? As discussed earlier in a conversation with Attorney of record Frank Cite, 

the Examiner understood that FutureLogic, Inc has created products for use by other 

corporations. Has the claimed invention in question been used by another person or 

party other than the inventor to use the invention without limitation, restriction or I 

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-A0172- 

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#:953 NAN04746 



obligation of secrecy to the inventor?. Has the invention, during the operation period, 

been used by a third party in a manner that informs the public or a competitor of the 

invention? During the operation, was the invention sold, or offered to be sold, to any 

party by the inventor or the assignee associated with the invention? A proper response 

to these questions would make it clear to the Examiner and place facts on record 

whether the invention was reduced to practice before the earliest reference with or 

without any "public use" or "on sale" activities. Refer to MPEP 2133.03 for the 

explanation of "On Sale" or "Public Use". In the case of the facts revealing that the 

invention was involved in "public use" or "on sale" activities, the 35 U.S.C. 102(b) 

rejections based upon a public use or sale of the invention will be maintained. If the 

facts reveal otherwise, the rejection will be withdrawn. 

Applicant is reminded that failure to fully reply to this requirement for information 

will result in a holding of abandonment. 

Conclusion 

7. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time 

policy as set forth in 37 CFR 1,136(a). 

A shortened statutory period for repfy to this final action is set to expire THREE 

MONTHS from the mailing date of this action. In the event a first reply is filed within 

TWO MONTHS of the mailing date of this final action and the advisory action is not 

mailed until after the end of the THREE-MONTH shortened statutory period, then the 

shortened statutory period will expire on the date the advisory action is mailed, and any 

00034 

Nanoptix' Summary Judgment ExhibitNo. 3 

-A0173-


#:954 NAN04761 



In re Application off ) 





FOR A GAMING 


Mail Stop RCE 


P.O. Box 1450 


Si_. 

AMENDMENT 

Examiner:. C. Dickerson 


August 13, 2008 

In response to the Office Action dated May 13, 2008, please amend the 

above-identified application as follows: 

00035 


-A0174- 

CERTIFICAT]_ OF ._S -WEB TRANSMISSION 

I hereby cer_lfy bat tiffs eo_resp_ndeoee is being filed ¢l_:troniealIy by 

EFS-Web wannmassioQto ¢a_United Statespatent OMce on 

August 13_ 2008 

(Dam of Tt'masmi_sion) 

I_ank L. Circ, Peg. No. 42.41_ 

(Name of Attorney for Applleaut) 

/Fran k Cite #42.4191 Aumtst 13, 2008 

Signature Date of Signature 

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Case 2:10-cv-07678-JFW -DTB Document 57-3 

#:955 

REMARKS 


NAN04762 

This application has been carefully reviewed in light of the Office Action dated 

May 13, 2008. Claims 82 to 152 and 154 to 166 are pending, of which Claims 82, 117 and 154 

are independent. Reconsideration and further examination are respectfully requested. 

Fig. 9 was objected to as including incorrect reference characters. Applicant 

submits herewith a substitute drawing including Fig. 9 with corrected reference characters. 

Accordingly, Applicant respectfu/ly requests withdrawal of this objection. 

Claims 82, 85 to 88, 90 to 92, 95 to 97, 103, 105 to 113, 116, 117, 120 to 123, 125 

to 127, 129, 131,132, I40 to 148, 151, 152, 154 to 16I and 163 to 166 were rejected under 35 

U.S.C. § 103(a) over U.S. Published Appln. No. 2002/0107065 (Rowe '065) in view of U.S. 

Patent No. 5,943,241 (Nichols). Claims 83, 84, 118 and 119 were rejected under 35 U.S.C. 

§ 103(a) over Rowe '065 and U.S. Published Appln. No. 200310013527 (Rowe '527) in view of 

U.S. Published Appln. No. 2002/0077901 (Katz). Claims 89, 93, 94 to 99, 101 to 104, 124, 128 

to 134, 136 to 138, 153 and 162 were rejected under 35 U.S.C. § 103(a) over Rowe '065 and 

Rowe '527 in view of U.S. Patent No. 6,511,377 (Weiss). Claims 100 and 135 were rejected 

under 35 U.S.C. § 103(a) over Rowe '065 and Nichols in view of U.S. Published Appln. No. 

2002/0111210 (Luciano). Claims 114, 115, 149 and 150 were rejected under 35 U.S.C. § 103(a) 

over Rowe '065 and Nichols in view of U.S. Patent No. 6,015,344 (Kelly). 

Applicant notes that the Office Action stated that Claims 83, 84, 118 and 119 

were rejected under 35 U.S.C. § 103(a) over Rowe '065 and U.S. Published Appin. No. 

200310013527 (Rowe '527) in view of U.S. Published Appin. No. 2002/0077901 (Katz) and that 

Claims 89, 93, 94 to 99, 101 to 104, 124, 128 to 134, 136 to 138, 153 and 162 were rejected 

under 35 U.S.C. § 103(a) over Rowe '065 and Rowe '527 in view of U.S. Patent No. 6,511,377 

-2- 

00036 


-A017 5-


#:956 NAN04763 

(Weiss). However, Rowe '527 was previously removed as a reference. In reviewing the 

Detailed Action starting on Page 29, AppLicant believes that only Rowe '065 and not Rowe '527 

was the intended reference. If such is not the case, Applicant respectfully requests that the 

Examiner contact Applicant's representative as indicated below so that the applicability of Rowe 

'527 may be discussed. 

Applicant is submitting herewith, but under separate letter, a Declaration under 37 

C.F.R. 1.131 to antedate Rowe '065 and Katz, as the claimed invention was actually reduced to 

practice before the earliest effective date of either r_ference. 

Therefore, Applicant submits that Rowe '065 and Katz should be removed as 

references and respectfully requests withdrawal of the rejections. 

No other matters being raised, Applicant submits that the application is in 

condition for all_wance and respectfully requests same. 

-3- 

00037 


-A0176- 

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#:957 



ham Applicationof." 

MARK MEYERHOFER 

Application No.: 10/405,112 

Filed: Ivlarch 31, 2003 

For: METHOD AND APPARATUS 

FOR A GAMING 


Commissioner for patents 

P.O. Box 1450 


Sir:. 

Examiner. C. Dicksr_on 

Group Art Unit:. 2624 

DECLARATION UNDER 37 C.F,R. §I.131 

TO ANTEDATE U.S, PATIENT APPLICATION PUBLICATION NO. 2002/0107065 

AND 

U.S. PATENT APPLICATION PUBLICATION NO, 2002f007790l. 

I, Mark Mey_ofer, de,clam that: 

I. I residein La Canada,California. 

2, I am a founderof FuturoLogio, Inc,(FummLogic) and havebeen 

aotivelyinvolvedinthedevelopmentof FutureLogio's thermalprinmrsintendedforusain 

00038 


-A017 7- 

Page ID 

NAN04767

Case 2:10-cv-O7678-JFW-DTB Document57-3 

#:958 Filed 09/28/11 Page 18 of 37 


FutumLogin's inception in 1983. 

3. Ireceived an undergraduate degree in Engineering fi'om the 

University of California, Los Apgoles (UCLA), specializing in electronins and computers. 

4. [ am submitting this declaration as the inventor of the invention 


5. I am aware that the Office Aotinn dated May 13, 2008 rejected the 

pending independent claims in the ahove-identifted application under 35 U.S.C. 103(a) 

over U.$. Patent Application Publication bin. 2002/0107065 (Rowe "065) in view of U.S. 

Patent No. 5,943,241 ('Nichols '241). The same Office Ar).ion dated May 13, 2008 also 

rejected dependent claims 83, 84, 118, and 119 under 35 U.S.C. 103(a) over Rowe '065 as 

modified by U.$. Patent Application Publication No. 2003/0013527 (Rowe '5"J7), and 

f?arther in :view of U.S. Patent Application Publication No. 2002/0077901 (Katz '901). [ 

am making this Declaration to show that the claimed invention was actually reducedto 

practice in the United States of America before December 19, 2000, which is the earliest 

cffeotiv¢ date of Rowe '065 sad Katz '901. 

6. Evidence of the octal re.duotion to practice of the claimed invention 

is found in a promotlcoai printer built and operated by FutoreLogic before December 19, 

-2- 

00039 


-A0178- 

Page ID 

NAN04768 

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#:959 

2000, The promotional printer generates printed items for financial transactions such as 

vouchers, receipts and tickets, as well as prL_ted items for promotional purposes such as 

coupons, for automated self-servi_ machines such as gaming machines, vending machines 

and gasoline pumps. The promotional printer has a first or main communication port for 

coupling the promotional printer to a machine controtter. The thain communieatlon port is 

adapted to reeeLve voucher data from the machine controLLer. The promotional printer also 

has a second or auxiliary communication port, separate from the main communication port, 

for coupling the promotional printer to a promotional controller and the auxiliary 

communication port is adapted to receive coupon data directly from the promotional 

controller separately of the machine controller. The promotional printer also has a 

processor adapted to receive the voucher data from the machine controller via the main 

commurtieation port and generate a voucher using the voucher data, and receive the cOupon 

data £rom the promotional controller via the auxiliary communication port and generate a 

coupon using the coupon data. After being built, the promotional printer was placed into 

operation and u_s_l for its intended purpose of generatlng printed items for financial 

transactions, including receipts and vouchers, using data received on the main 

communication pert and generating printed items for promotional purposes, including 

coupons, using data received on the auxiliary communication port. 

7. At the end of an operational period, the promotional printer was 

placed in storage at FutureLogie's facilities. The printer was retrieved from storage by 

FutureLogic for the preparation of a declaration under 37. CFR 1.131. The printer has not 

-3- 

00040 

Nanoptix' Summary Jui:lgment Exhibit No. 3 

-A0179- 

Page ID. 

NAN04769


#:960 

Filed 09/28/11 Page 20 of 37 

beenmodifiedsincebeingremoved fromoperationand plaeedinstorag exceptthatthe 

promotionalprinterhasbeen disassembledforthepurposeofprcpatingtheattached 

exhibits. 

8. ExhibitA isa frontview ofthepromotionalprinterwithoutprint 

media. Exhibit B is the same front view of the printer with the print media in place. The 

print media is composed of individual sections that ate separated by perforations and stored 

in a fan-fold manner in an upper paper _ay. The format of the print media is that which is 

used in the gaming and vending industries. Specifically, the individual sections of the print 

media am of the sanae size as U.S. paper cur_ncy for easy manipulation by bill va[idators. 

The prim media is used by the printer m print rer,cipts, vouchers, coupons or the like. 

9. ExhibitC isa left-side viewoftheprintershowings whiteMolex 

connector,The Molex ceuncctoristheconnectorforthemaincommunicationportofthe 

promotionalprinter. 

• 10. Also shown in Exhibit C is a paper label that was affixed to the 

promotional printer after the promotional printer was built but before the promotional 

prlnter was placed into operation. The paper label includes text and baroodc indies of the 

serial number oftbe printer, which includes an 0needed model number, encoded 

manufacturing date and encoded sequence number. The portion of the serial nursbor 

on.coding the manufacture date and the batcode for the serial number have been redacted. 

-4- 

00041 

Nanoptix' "Summary Judgment Exhibit No. 3 

-A0180- 

Page ID 

NAN04770 

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Case 2:10-dv-07678-JFW-DTB Document 57-3 Filed 09/28/11 Page 21 of 37 

#:961 

The rcdectedportionoftheserialnumber and barcodeindicate tha thepromotionalprinter 

was manufactured befor_ December [9, 2000. 

11. Exhibit D is a partial rear view of the promotional printer showing a 

bright metal DB9 connector on the right side of the print media. The DB9 connector is a 

connector for the auxiliary communication port of'the promotional printer. 

12. Exhibit E is a view of the promotional printer with the motherboard 

exposed, The motho.,-board is connected to an interface board for the main and auxiliary. 

communication ports by the multiple connector having a ribbon cable shown at the top 

edge of the motherboard, The motherboard includes a m_crocentroller having a processor 

for controlling the operations of the promotional printer. The motherboard includes flash 

memory for storing programming instructions and random access memory for storing 

tamplates for printed items. The processor is programmed to print printed items using the 

templat_ stored in memory and data imccived from the main and auxiliary communication 

ports. 

,13. Exhibit F is a view of the promotional printer with the interface 

circeit board exposed. A multipin connector having a ribbon cable shown at the top of the 

interface board connects the interface board to the motherboard of Exhibit E. The Moiex 

connector on the lefbhand side of the interface board is the connector for th_ main 

cormnunicatioa port shown in Exhibit C. A ribbon cable on the right hand side of the 

intorhoe hoard is connected to the DB9 connect'or for the auxiliary communication port 

-5" 

00042 


-A0181- 

Page ID 

NNq04771

Case 2:10-cv-O7678-JFW-DTB Document 57-3 Filed 09/28/11 .Page 22 of 37 

#:962 

shown in Exhibit D. The interface board is used to connect the promotional printer to a 

machine controller using an optically-isolated serial communication bus using a protocol " 

such as MDB (as used in vending applications) or Nciplcx (as used in gaming applications) 

and connect'to a promotional controller over a serial communication bus uslng a protocol 

such as RS-232, The interface board also includes a real thne clock that is used by the 

microcontroilar on the motherboard of Exhibit D. 

14. A copy of a schematic drawing oflho interface board of Exhibit F is 

shown in Exhibit G. The schematic was taken from FutureLogic's electronic archives an.d 

has not been modified since it was approved by me on a date before December 19, 2000. 

Dates printed on the schematic have been redacted, but are all prior December 19, 2000. 

15. As shown on the lett side of the schematic, the interface board 

inolndes cormeetor J2 for a 2x4 "Molex" style connector for MDB signal lines M_RX and 

M_TX. Molex connector in the schematic corresponds to _o Molex connector of the main 

communication port shown in Exhibits C and F. These signal lines are routed tl_ogh 

optoisulators 1£:3 and I(34 to buffer tC2-B. The signals lines are then routed from the 

barfer IC2-B as MDB transmission signal line TXD MDB and MDB received signal line 

RXD_MDB tomultipl0xor IC6 shown in the enntcr of the sohematie, la addition, as 

shown on the fight side of the schematic, eormeetor J4 is provided for a DB9 style 

conne_tor for routing RS-232 signals. The DB9 conneetoi enrreaponds to the DB9 

eonneotor.for the auxiliary communication port shown in Exhibit D, Connector J4 is 

"6- 

00043 


-A0182- 

Page ID 

NAN04772 

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Case 2:10-cv-07678-JFW-DTB Document 57-3 Filed 09/28/11 page.23 of 37 

#:963 

connected to connector J3 via a ribbon cable and the RS-232 signal lines TY__DB9 and 

RX.D DB9 are routed to RS-232 transceiver 1C1. From ICI, P-,XD and TXD signal lines 

are touted to the multiplexer IC6. From the multiplexer I(36, a single set of KX and TX 

signal lines are routed to a multipin connector Jl used to connect the interface board to a 

promotional printer's motherboard. The multiplexer 1(26 is further connected to a Data Set 

Ready (DSR.) signal line coming from the multipin connector J1 Sat is used to select that 

the RXD MDB and TXD-MDB signal lines be routed as the RX and TX signal lines out 

of multiplexer i(36, or select that the RXD and TXD signal lines be routed as the RX and 

TX signal tines out of multiplexer IC6. The intea'fiaee board further includes a real-time 

clock IC5 that is eonneoted to the multipin connector ,fl. 

16. The claimed invention was actually reduced to practice in the United 

Stat_ of Amexlca at Fut_mLoglo's facilities located in Glendale, CA. 

-7- 

00044 


-A0183- 

't 

I 

Page ID 

NAN04773


#:964 

Filed 09/28/11 Page 24 of 37 

17. I hereby d¢claz= that all statements made herein of my own 

knowledge arc tree and that all statements made on information and belief are believed to 


statements and the like so made are punishable by fine or imprisonment, or bo_ under 


may jeopardize th.c validity of this application and any patent issuing thereon. 

V brae 

Page ID 

NAN04774 

-8- ! 

00045 


-A0184- 

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Case 2:10-cv-O7678-JFW -DTB Document 57-3 Filed 09/28/11 

#:965 

Exhibit A 

00046 


-A0185- 

Page 25 of 37 Page ID 

NAN04775

Case 2:10-cv-O7678-JFW-DTB Document 57-3 Filed 09/28/11 

#:966 

00047 


-A018 6 - 


NAN04776 

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Case 2:10-cv-07678-JFW -DTB Doqument 57-3 Filed 09/28/11 

#:967 

Exhibit B 

00048 


-A0187- 


NAN04777

Case 2:10-cv-07678-J FW -DTB Document 57-3 Filed 09/28/.11 

#:968 

00049 


-A0188- 


NAN04778 

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#:969 

Exhibit C 

00050 

Nanoptix' Summary Judgment Exhibit NO. 3 

-A0189- 


NAN04779

case 2:lO_cv-O7678"3FW .03"B 

Document 57-3 

#:970 

F iled09128111 

p age 30 of 37 

_,.o__°"_ _"_"°" 

.p,o,19o- 

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Case 2:10-cv-O7678-JFW-J3TB Document 57-3 Filed 09/28/11 

#:971 

Exhibit D 

00052 


-A0191- 


NAN04781


#:972 

Filed 09/28/11 

00053 


-A0192- 


NAN04782 

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Case 2:10-cv-07678-JFW -DTB Document 57-3 Filed 09/28/11 

#:973 

Exhibit E 

00054 

Nanoptix' Summary Judgment Exhibit Nol 3 

-A0193- 


NAN04783

Case 2:10-cv-O7678-JFW -DTB Document 57-3 Filed 09/28/11 Page 34 of 37 Page ID 

#:974 

" NAN04784 

00055 


-A0194- 

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Case 2:10-cv-07678-JFW-DTB Document 57-3 Filed 09/28/11 

#:975 

Exhibit F, 

00056 


-A0195- 


NAN04785


#:976 

00057 


-A0196- 


NAN04786 

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#:977 

Exhibit G 

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-A0197- 


NAN04787

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00059 


-A0198- 

Page ID 

NAN04788

Case 2:10-cv-O7678-JFW-DTB Document 57-4 Filed 09/28/11 Page 2 of 38 Page ID I 

#:979 NAN04789 

Replacement Sheet I 

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L..o4... ................. o°°,,.°_.o..o ....... • ..... °o.o_oo .................. , ............................... _oo .......... o............. . 

I 

00060 


-A0199- 

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Case 2:10-cv-O7678-JFW-DT8 Document 57-4 Filed 09/28/11 

#:980 

Ut_a_ZD STA_S PA_t, rr AND Ta._EMAr_ OFFICE 

I '_'_'_°_N°-- I _oDA_ I _TN_,_O_ 

[0/405. t.12 03/31/_003 

5514 7590 05113/'200B 

FITZPATRICK CELLA ]-LAI_.P_R & $CI]_rTO 

30 ROCKEFELLER PLAZA 

NEW YORK, NY 10112 

Page3of38 PagelD 

UNrI'ED STATES D_ARI_AI_NT Oi* COM34F_CE 

Ut_ted SLatts Patent mad Trademark Offioe 

Atlarem COMMISSIONER FOR PATENTS 

P.O,B_ 145e 

AIe_mdrlt. Vttl_t 22313-[450 

W'W_.RqoI_g_ 

NAN04798 

{A_rol_'_ _OC_ETNO. i CONVmr_TIONO. ] 

Mark Mcyerh_'_ 03226.000105. 5028 

DICKKRSON, CHAD S 

I ART UNIT I pAPI_ NUMBER I 

2625 

[ _AK. DATB I DELIVHRY MODE I 

05113/2008 PAPER 

Please find below and/or attached an Office communication concerning this application or proceeding. 

The time period for reply, if any, is set in the attached communication. 

PTOL-90A (Rev. 04/07) 

00061 


-A0200-

II 

Case 2:10-cv-07678-JFW-DTB Document 57-4 Filed 09/28/11 Page 4 of 38 Page ID .i 

#:981 NAN04799 

Appt|cation No. Applicant(s) 

10/405,112 MEYERHOFER, MARK 

Off.me Action Summary Examiner Art Unit 

Chad Dickersort 2625 

- The MAILING DATEofthls communication appears on the ceversheet with the correspondence address - 


Status 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS, 

WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of 5me may be ava_abte under the provisions of 37 CFR 1.i3S(a_ In no event, however, may a reply be I_mely filed 

alter SIX (6) MONTHS from the ma_Jlng date of this comrnunlcaUen, 

- If NO pedod for reply is specified above, the maximum stalat0ry pedod wlll a_0ply or¢l will e_q_ire SIX (6) MONTHS _ the _,lthg _ta of _ls _mmunl_tton. 

- Failure to reply wlth_ the set or extended period for reply _ by st_te, cause the application to become ABANOONEO (35 U,S.C. § 133). 

Any reply received by the Office later then 6,u_e months alter the rn_ling data of this coraraunication, even if timely filed, may reduce any 

earned patent term adjustment. See 37 CFR 1.704(b). 

1)[] Responsive to communication(s) filed on 13 February 200& 

2a)['-I This action is FINAL. 2b)_;_ This action is non-final. 

3)[-] Since this application is in condition for allowance except for formal matters, prosecution as to the medts is 

closed in accordance with the practice under Ex parts Quay/e, 1935 C.D. 11,453 e.G. 213. 


4)_;_ Claim(s) 82-152 and 154-166 is/are pending in the application. 

4a) Of the above claim(s) _ is/are withdrawn from consideration. 

5)[-] Claim(s)_ Is/are allowed. 

6)_;_} Claim(s) 82-152 and 154-166 is/are rejected. 

7)[-I Claim(s) _ is/are objected to. 

8)[-I Claim(s) _ are subject to restriction and/or election requirement. 


9)[7 The spec_cation is objected to by the Examiner. 

10)_;_ The drawing(s) filed on 31 March 2003 is/are: a)["l accepted or b)_;_ objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). 

Replacement drawing sheet(s) including the correction is requlred if the drawing(a) Is objected to. Sea 37 CFR 1.121 (d). 

11)["1 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT£)-152. 

Priority under 35 U.S.C. § 1t9 

12)[--I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § i 19(a)-(d) or (f), 

A_chreant(e) 

a)E] All b)[--I Some * c)l-'] None of: 

l.r] Certified copies of the pdority documents have been received, 

2.1-I Certified copies of the pdodty documents have been received in Application No. __ 

3.1-] Copies of the certified copies of the pdodty documents have been received in this National Stage 



1) [] Notice of ReferencesCited (PT0-892) 

2) [] Noticeof DraftsDerson'sPatentDrawingReview (PT0-948) 

3) [] information DisclosureStatement(s)(PTO/S5/08} 

PaperNo[s)/Mail Date See Conttnua#enSheet. 

U.& patent andTrada_mrk Off'me 

PTOL-326 (Ray. 08-08) Off'meAction Summary 

00062 


-A0201 - 

4) [] Interview Summary(PTO413) 

PaperNe(s)/Mail Date.. 

5) [] Noticeof Informal PatentAppllcatJen 

6) [] Other:. 

Part ofPaper No./Mail Date 20070301 

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#:982 NAN04803 



Claim Rejections. 35 USC § 103 

6. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 

obviousness rejections set forth in this Office action: 

Page 4 

(a) A patent may not be obtained though the invention is not Identically disclosed or described as set 

forth in section 102 of this title, ff the differences between the subject matter sought to be patented and 

the pdor art are such that the subject matter as a whole would have been obvious at the time the 

invention was made to a person having ordinary skill In the art to which said subject matter pertains. 

Patentability shall not be negatived by the manner In which the invention was made. 

7. Claims 82, 85-88, 90-92, 95-97, 103, 105-113, 116, 117, 120-123, 125-127, 129, 

131,132, 140-148, 151,152, 154-161 and 163-166 are rejected under 35 U.S.C. 103(a) 

as being unpatentable over Rowe '065 (US Pub No 2002/0107065)in view of Nichols 

'241 (US Pat No 5943241). 

Re claim 82: Rowe '065 discloses gaming machine with receipt generation capabilities, 

comprising: 

a main communication port for coupling the promotional printer (46) to a machine 

conb'oller, the main communication port adapted to receive voucher data from the 

machine controller (i.e. the controller (70) of the gaming machine is able to send 

voucher data when a player is ready to cash-out to the printer (46) in the system. It is 

understood that the printer (46) is connected to the controller in the system through a 

communication port that is through a cable harness (or bus). The printer is responsive 

to the controller and receives cash out information and prints out vouchers or tickets 

reflecting the winnings of the user; see figs. 1-3; paragraphs [0024]-[0028]); and 

an auxiliary communication port for coupling the promotional pdnter to a 

promotional controller (i.e. the printer is also able to receive information from the player 

00063 

Nanopti_ Summa_ JudgmentExhibitNo. 3 

-A0202-


#:983 



8. Claims 83, 84, 118 and 119 are rejected under 35 U.S.C. 103(a) as being 

unpatentable over Rowe '065, as modified by Rowe '527, and further in view of Katz 

(US Pub No 2002/0077901). 

Re claim 83: The teachings of Rowe '065 in view of Nichols '241 are disclosed above. 

However, Rowe' 065 fails to disclose the gaming promotional printer, wherein the 

processor is _rther adapted to conduct couponing activities in serial with vouchering 

activities. 

However, this is well known in the art as evidenced by Katz. Katz discloses the 

processor is further adapted to conduct couponing activities in serial with vouchering 

activities (i.e. in figure 7, there are a multiplicity of steps that can be performed in series 

or parallel. Rowe '065 has a processor that can conduct couponing activities with 

vouchering activities and now with Katz, this combination allows for these activities to 

be done in series; see fig. 7; paragraph [0068]). 

Therefore, in view Of Katz, it would have been obvious to one of ordinary skill in 

the art at the time the invention was made to have a processor to conduct couponing 

activities in serial with vouchering activities in order to perform the activities alone in 

respect to one another (as stated in Katz paragraph [0068]). 

Re claim 84: The teachings of Rowe '065 in view of Nichols '241 are disclosed above. 

However, Rowe '065 fails to disclose the gaming promotional pdnter, wherein the 

processor is further adapted to conduct couponing activities in parallel with vouchedng 

activities. 

00064 


-A0203- 

Page ID 

NAN04825 

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#:984 " F, roJs_ocos_ NA_,_:'901 

• Approvnd (or use through 10131/200_ OMB 0B5i.0031 " I _ 

• _ U.E, Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE 11 

t .,, .-., ,,,o, • Dofa , =0. , Z/'7 

\Ik" ._Y FOR .... 

. o (c) ..... 

TRANSMITTAL 

C_D EXAMINATI N R E Mark Meye_ofer 

f 

Sct_ectton (b) of 35 U.$.C. § 132, effecth, e on May 2.9, 2000, 

pmv_i_ for continued e_mlr,.¢ton of an uUl;ty or plant appltc_linn 

Iliad on or after June 8, 1995. 

See The Amedcan Inventors Pmt_an Act of 1999 (AtPA). 

Examiner Name C. Dickerson 

AttorneyDockatNumber 03226.000105 

.= i i ii 

This,is a Request for Continued Examination (RCE) under 37 C.F,R, § 1.114 of the above-idehtified spplicaUon. 

NO._._ 37 C.F.R. § l. l141s effectJve on Mey 29, _O. _fthe ab_ve_de_i0ed app_icaE_n was fi_edpri_r _ May 2g_ 2_ epp_lcant m_y w_sht_ c_nstd_r _ng a 

con_nuad pros6cutton appflcaUon (CPA) under 3 Z C.F.R. § 1.53(d) (p TO/S_J2g) Instead of e RCE to be ei_g_te for the paten term adjustment provisions of Ihe AIPA. 

Sea Changes to AppLtcat/on Exam]eatan and Provisional AppllcaUon Ptac6ce. Rna] Rule, 65"Fed. Reg. 50092 (Aug. 16, 2000}; InterimRule, 6.6Fed, Reg. 14_65 

(Mar. 20, 2000), f 233 Off. Gem PaL Of/ice 4T (Apt, 11, ;to00), which established RCE pracUce, 

= = 

a. [] Previously submitted 

I. [] Consider the amendment(s)/reply under 37 C,F.R. § 1.116 previously filed on 

(Any unantomd amandment(s) refened _o _bove will be entered). 

il, _ Consider the arguments in the Appeal Bdef or Reply Brief previously tiled on 

ill, I I Other 

b, [] Enclosed " 

it, Affidavlt(s)/Declaretien(s) 

i, iii, _ Amendment/Reply 

Information Disclosure Statement (10S) 

; . • iv. Other Petition for one-month extension of time 

_" I Miscellaneous I 

3 

l 

a. [] Suspension of action on the above-identified application is requested under 37 C.F.R. § 1.103(c) fora period of 

b, [] Other. 

months, (Perta_of_n shall not e_.eed 3 months; Fee under 37 C.F.R. § 1.17(_) required] 

The RCE fee under 37 C,F.FL § 1,17(e) Is requtr_ by 37 C,F,R. § 1,114 whan the RCE Is ilind. 

a, [] The Director is hereby authorized to charge any deticienc_es In the following fees, or credit any overpayments, to 

Deposit Account No, 06-1205 

L _] RCE fee required under 37 C,F,R, § 1,17(e) 

It, _ Extension of time fee (37 C,F,R, §§ 1,136 end 1,17) 

ilL [] Other Petition under 37 C.F.R. 6 1,84{b)(2_ 

b, [] Cheeks in the amount of $405 _RCE)_ $60 _extension), $1,30 ,(petition) and $50 (c a ms) are enclosed 

c, [] Payment by credit card (FormPTO-2038endosnd) 

SIGNATURE OF APPUCANT, AT"I'ORNEY; OR AGENT REOUIREO 

Name(Pt/nt/Type) 1_ _ _ I Regls_a_onNo.(Afforney/Agant_ I 42,419 

Signature S_____ _ I Bate I Februar_ 12, 2008 

I hereby carlJfy that this cormspondenea ]a bnlng deposited with the United Slates Pastel Set,Ice wffil au_clent postage es first cta_s mail in en envelope addressed to: Mall 

Stop RCE, Commissioner for Patents, P.D, Box 1450, Alexandria, VA 22313-1450, or tocslml_a tmnsm]tted Io the U.S, Patent and Trademark Office ca: 

L Name (Print/Type) _ -- CERTIFICATE OF MAILING OR TRANSMISSION 

, ,SI_,,, ature , , Date 

Bt,vdan Hour Statamerd: This fon'n is estimated to lake 0.2 hou_ to comp_eta. Tune will vary depending upon the needs of the thd'_dual case. Any 

commants o_ the ernount of Lares ,'/ou am required to ¢omple4e this fm'm should 10e sent to the Chief Infssmatlon Officer, Dlmc_r of the U,S.P.T.O., P.O, Box 

• 1450, Alnxanddn, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS, SKNO Fees end Completed Forms to the 

fofiowiag address: Mall Stop RCE, Comm]salonst for patents, P.O; Box 1450, Alexandria, VA 2.2313-1450, 

Form #18t B2/1_/_1]{_ _I_ON_AFi 6DBBBB21 18_651t_ 

FCH9 W8 t962282vi 

00065. 


-A0204- 

01 FC:28@t 485.89 OP


#:985 

Filed 09/28/11 Page 8 of 38 



t_"_-_._.._(n "" re Application oF. ) 

: Examiner: C. Diekerson 






FOR A GAMING 



P.O. Box 1450 


Sir: 

DECLARATION 15NDER 37 C,F.IL §1.131 

TO ANTEDATE U.S. PATENT NO. 7,008,320 

AND 

U.S. PATENT APPLICATION PUBLICATION NO. 2003/0013527. 

I, Mark Meyerhofer,declare that: 

1. I reside in La Canada, California. 

2. I am a founder of FutureLogie, Inc. (FutureLogie) and have been 

actively involved in the development of FutureLogie's thermal printers intended for use in 

00066 

Nanoptixt Summary Judgment Exhibit No. 3 

-A0205- 

Page tD 

NAN04924 

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#:986 

Filed 09/28/11 Page 9 of 38 


FutureLogic's inception in 1983. 

3. I received an undergraduate degree in Engineering from the 

University of CalLfomia, Los Angeles (UCLA), specializing in electronics and computers. 


described and claimed in the above-identified patent applicatiom 

5. I am aware that the Ol_ee Action dated October 16, 2007 rejected 

the pending independent claims in the above-identified application under 35 U.S.C. 103(a) 

over U.S. Patent No. 7,008,320 (Rowe '320) and U.S_ Patent Application Publication No. 

2003/0013527 (Rowe '527). I am making this Declaration to show that the claimed 

invention was actually reduced to practice in the United States of America before July I0, 

2001, which is the earliest effective date of Rowe '320 and Rowe '527. 

6. Evidence of the actual reduction to practice of the claimed invention 

is found in a promotional printer built and operated by FutureLogic before July I 0, 2001. 

The promotional printer generates printed items for financial transactions such as vouchers, 

receipts and tickets, as well as printed items for promotional purposes such as coupons, for 

automated self-service machines such as gaming machines, vending machines and gasoline 

pumps. The promotional printer has a first or main communication port for coupling the 

-2- 

00067 


-A0206- 

Page ID NAN04925

Case2:10-cv-07678-JFW-DTB Document57-4 

#:987 Filed09/28/11 Page 10 of 38 

promotional,printer to a machine controller. The main communication port is adapted to 

receive voucher data from the machine controller. The promotional printer also has a 

second or auxih'ary communication port, separate from the main communication port, for 

coupling the promotional printer to a promotional controller and the auxiliary 

communication port is adapted to receive coupon data directly from the promotional 

controller separately of the machine controLler. The promotional printer also has a 

processor adapted to receive the voucher data from the machine controller via the main 

communication port and generate a voucher using the voucher data, and receive the coupon 

data from the promotional controller via the auxiliary communication port and generate a 

coupon using the coupon data. After being built, the promotional printer was placed into 

operation and used for its intended purpose ofgerterating printed items for financial 

transactions, including receipts and vouchers, using data received on the main 

communication port and generating printed items for promotional purposes, including 

coupons, using data received on the auxiliary communication port. 

7. At the end of an operational period, the promotional printer was 

placed in storage at FutureLogie's facilities. The printer was retrieved from storage by 

FutureLogic for the preparation of this declaration. The printer has not been modified since 

being removed from operation and placed in storage except that the promotional printer has 

been disassembled for the purpose of preparing this declaration and the attached exhibits. 

-3- 

00068 


-A0207- 

Page ID 

NAN04926 

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Case 2:10-cv-07678-JFW -DTB 

m 

Document 57-4 

#:988 

Filed 09/28/11 Page 11 of 38 

8. Exhibit A is a front view of the promotional printer without print 

media. Exhibit B is the same front view of the printer with the print media in place. The 

print media is composed of individual sections that are separated by perforations and stored 

in a fan-foM manner in an upper paper tray. The format of the print media is that which is 

used in the gaming and vending industries, Spe_ificaUy, the individual sect_ns of the print 

media am of the same size as U.S. paper currency for easy manipulation by bill validators. 

The print media is used by the printer to print receipts, vouchers, coupons or the like. 

9. Exhibit C is a left-side view of the printer showing a white Molex 

connector. The Molex connector is the connector for the main communication port oftbe 

promotional printer. 

10. Also shown in Exhibit C is a paper label that was affixed to the 

promotional printer after the promotional printer was built but before the promotional 

printer was placed into operation. The paper label includes text and barcode indica of the 

serial number of the printer, which includes an encoded model number, encoded 

manufacturing date and encoded sequence number. The portion of the serial number 

encoding the manufacture date and the barcode for the serial number have been redacted. 

The redacted portion of the serial number and barcode indicate that the promotional printer 

was manufactured before July 10, 2001. 

-4- 

00069 


-A0208- 

Page ID 

NAN04927


r 

Document 57-4 

#:989 

Filed 09/28/11 Page 12 of 38 

1I. Exlfibit D is a partial rear view of the promotional printer showing a 

bright metal DB9 connector on the right side of the print media. The DB9 cormeetor is a 

connector for the auxiliary communication port of the promotional printer. 

12. Exlu'bitE is a view of the promotional printer with the motherboard 

exposed. The moth_rboard is connected to an interface board for the main and auxih'ary 

communication ports by the multipin connector having a n'bbon cable shown at the top edge 

of the motherboard. The motherboard includes a mieroeontroller having a processor for 

controlling the operations of the promotional printer. The motherboard includes flash 

memory for storing programming instructions and random access memory for storing 

templates for printed items. The processor is programmed to print printed items using the 

templates stored in memory and data received from the main and auxiliary communication 

ports. 

13. Exl_"oit F is a view of the promotional printer with the interface 

circuit board exposed. A multipin connector having a ribbon cable shown at the top of the 

interface board connects the interface board to the motherboard of Exhibit E. The Molex 

connector on the let,-hand side of the interface board is the connector for the main 

communication port shown in Exhibit C. A ribbon cable on the right hand side of the 

interface board is connected to the DB9 connector for the auxiliary communication port 

shown in Exhibit D. The interface board is used to connect the promotional printer to a 

machine controller using an optically-isolated serial communication bus using a protocol 

such as MDB (as used in vending applications) or Netplex (as used in gaming applications) 

-5" 

00070 


-A0209- 

Page ID 

NAN04928 

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v, 

Document 57-4 

#:990 

Filed 09/28/11 Page 13 of 38 

and connect to a promotional controller over a serial communication bus using a protocol 

such as RS-232. The interface board also includes a real time clock that is used by the 

microcontroller on the motherboard of Exhibit D. 

14. A copy of a schematic drawing of the interface board of Ex_ru'bitF is 

shown in Exhibit G. The schematic was taken from FutureLogic's electronic archives and 

has not been modified since it was approved by me on a date before July 10, 2001. Dates 

printed on the schematic have been redacted, but are all prior July 10, 2001. 

15. As shown on the left side of the schematic, the interface board 

includes connector J2 for a 2x4 "Molex" style connector for MDB signal lines M_ILK and 

M_TX. Molex connector in the schematic corresponds to the Molex connector of the ma'm 

communication port shown in Exhibits C and F. These signal lines are muted through 

optoisolators IC3 and IC4 to buffer IC2-B. The signals lines are then routed from the 

buffer IC2-B as MDB transmission signal line TXD_MDB and IvlDB received signal line 

RXD_MDB to multiplexer IC6 shown in the center of the schematic. In addition, as shown 

on the right side of the schematic, connector J4 is provided for a DB9 style connector for 

routing RS-232 signals. The DB9 connector corresponds to the DB9 connector for the 

auxiliary communication port shown in Exhibit D. Connector J4 is connected to connector 

J3 _,ia a r_bon cable and the RS-232 signal lines TXD_DB9 and RXD_DB9 are routed to 

RS-232 transceiver IC1. From ICI, RXD and TXD signal lines are routed to the 

multiplexer IC6. From the multiplexer IC6, a single set of RX and "IX signal lines are 

-6- 

00071 


-A0210- 

Page ID 

NAN04929


#:991 

Filed 09/28/11 Page 14 of 38 

routed to a multipln cormcctorJ1 used to connect the inten_ce board to a promotional 

printer's motherboard. The multiplexer IC6 is further connected to a Data Set Ready 

(DSR) signal line coming from the multipin connector J1 that is used to select that the 

RXD_MDB and TXD_MDB signal lines be routed as the RX and TX signal lines out of 

multiplexer IC6, or select that the RXD and TXD signal lines be routed as the RX and TX 

signal lines out of multiplexer I(26. The interface board further includes a reaMime clock 

IC5 that is connected to the multipin connector Jl. 

t 6. The claimed invention was actually reduced to practice in the United 

States of America at FutureLogic's facilities located in Glendale, CA. 

I 7, I hereby declare that all statements made herein of my own 

knowledge are true and that all statements made on information and belief are believed to be 

true, and further that these statements were made with the knowledge that willful false 


Section 1001 of Title 18 of the United States C.ode, and that such willful false statements 

may jeopardize the validity of this application and any patent issuing thereon. 

FCHS_WS 1_06vl 

Date Mark Meyerhofer 

-7- 

00072 


-A0211- 

Page ID 

NAN04930 

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I Case 2:10-cv-07678-JFW-DTB Document 57-4 Filed 09/28/11 Page 15 of 38 

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.,'..;.?,.'.,;,_ :. _, • , 

• : :.-': ._._,,_.--.. . _ . 

'ii_ • "•_ - 7- , 

00073 


-A0212- 

Page ID 

NAN04931


#:993 

% 

00074 


-A0243- 

Page 16 of 38 

Page ID 

NAN04932 

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Case 2:10-cv-07678-JFW-DTB Document 57-4 

#:994 

Filed 09/28/11 

o[_o75 


-A0214- 

Page 17 of 38 Page IO 

NAN04933


#:995 

00076 


-A0215- 

Page ID 

NAN04934 

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#:996 

00077 

Naneptix' Summa_ Judgment Exhibit No. 3 

-A0216- 

Filed 09/28111 Page 19 of 38 Page ID ........... 

NAN04935

Case 2:10-cv-O7678-JFW-DTB Document 57-4 

#:997 

00078 


-A0217- 


NAN04936 

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Ii Case 2:10-cv-07678-JFW-DTB Document 57-4 Filed 09/28/11 Page 21 of 38 

#:998 

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00079 


I -A0218- 

Page ID 

NAN04937


#:999 NAN04945 



Office -Action Summary Examiner ArtUnit 

Chad Dickerson 2625 

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address - • 


Status 


WHICHEVER iS LONGER,. FROM THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be availalde under the plo¥1sions of 37 CFR 1.136(a}. In no event, however, may a reply be timely filed 

after SIX (6) MONTHS from the rnai_ng date of this communication, 

- If NO period for reply is speci_ed above, the maximum stattl_ W pe_od will apply and wilt expire SIX (6) MONTHS from the mailing data of &,Is communication. 

- Failure to reply wittdn the set or extended pedod for reply wilt, by slalute, cause Ih= application to become ABANDONED (35 U,S.C. § 133). 

Any reply recolved by the Office later than tt_eo months after the ma_ng data of this communlca_Josl, even if _;rnefy filed, may reduce any 

earned patent term adjustmanL Sea 37 CFR t.704(b}. 

1)C;_ Responsivatocommunicatton(s) filed on 8/2/2007. 

2a)["1 This action is FINAL 2b)[_ This action is non-finaL 

3)E_ Since 'this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11,453 O.G. 213. 


4)[] Claim(s) 82-162 is/are pending in the application. 

4a) Of the above claim(s) 153 is/are withdrawn from consideration. 

5)1"-] Claim(s) _ is/are allowed. 

6)[_] Claim(s) 82-162 is/are rejected. 

7)1--1 Claim(s) _ is/are objected to. 

8)1--] Claim(s) _ are subject to restriction and/or election requ_remenL 


9)[] The specification is objected to by the Examiner. 

10)[_ The drawing(s) filed on 31 March 2003 is/are: a)E] accepted or b)_;_ objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). 

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d). 

11 )['-] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152, 

Priority under 35 U.S.C. § 149 

12)[-] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or if). 

Attachment(e) 

a)]'-I All b)[-J Some * c)F-I None of: 

1.[-1 Certified copies of the priority documents have been received. 

• 2.F"I Certified copies of the pdodly documents have been received in Application No, __ 

3.1-'] Copies of the certified copies of the pdority documents have been received in this National Stage 



1) [] Noticeof References Cited (PTC_92) 

2) [] Noticeof Draftsperson'sPatentDrawingReview (PTO-S48) 

3) [] Information DiscfosumStatentent(a)(PTO/SB/08) 

Paper No(s)lMallDate _ attachment. 

U.a. p_ont lind Trademas_ Ol_ice 

PTOL-326 (Ray. 08-06) Office Action Summary 

00080 


-A0219- 

4) [] InterviewSummary(PTO413) 

Paper No(s)/MatiDate.. 

5) [] Noticeof lnfo_al PatentApplication 

6) [] Other:. 

Part of Paper NoJMailData20071012 

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#: 1000 

Filed 09/28/11 Page 23 of 38 

Application/Control Number:. 10/405,112 Page 3 


drawing sheet should include all of the figures appearing on the immediate prior version 

of the sheet, even if only one figure is being amended. The figure or figure number of an 

amended drawing should not be labeled as "amended." If a drawing figure is to be 

canceled, the appropriate figure must be removed from the replacement sheet, and 

where necessary, the remaining figures must be renumbered and appropriate changes 

made to the brief description of the several views of the drawings for consistency. 

Additional replacement sheets may be necessary to show the renumbering of the 

remaining figures. Each drawing sheet submitted after the filing date of an application 

must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" 

pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the 

applicant will be notified and informed of any required corrective action in the next Office 

action. The objection to the drawings will not be held in abeyance. 

Claim Rejections - 35 USC § 103 

6. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 

obviousness rejections set,forth in this Office action: 

(a)A patentmaynotbe obtainedthough' theinventionis notIdenUcaflydisclosedordescribedasset 

forthin section102ofthistitle,ifthedifferencesbetweenthesubjectmattersoughto be patentedand 

thepriorartaresuchthatthesubjectmatteras awholewouldhavebeenobviousatthe timethe 

inventionwasmadeto a personhavingordinaryskillinthearttewhichsaidsubjectmatterpertains. 

Patentabilityshallnotbenegativedbythe mannerinwhichthe invenUenwasmade. 

7. Claims 82, 85-88,90-92,95-97,103,106-113,116,117,120-123,125-127,129, 

131,132, 141-148, 151,152 and 154-161 are rejected under35 U.S,C. 103(a) as being 

unpatentable over Rowe '320 (US Pat No.7008320) in view of Rowe '527 (US Pub No 

2003/0013527). 

00081 


-A0220- 

Page ID 

NAN04947

Case2:10-cv-O7678-JFW-DTB Document57-4 Filed09/28/11 

#:1001 

Application/ControlNumber:10/405,112 Page31 

Art Unit:2625 

8. Claims83,84,118and 119arerejectedunder35 U.S.C.103(a)asbeing 

unpatentable over Rowe '320, as modified by Rowe '527, and further in view of Katz 

(US Pub No 2002t0077901). 

Re claim 83: The teachings of Rowe '320 in view of Rowe '527 are disclosed above. 

However, Rowe' 320 faiis to disclose the gaming promotional printer, whereln the 

processor is further adapteci to conduct eouponing activities in serial with vouchering 

activities. 

However, this is well known in the art as evidenced by Katz.. Katz discloses the 

processor is further adapted to conduct couponing activities in serial with vouchering 

activities (i.e: in figure 7, there are a multiplicity of steps that can be performed in series 

or parallei. Rowe '320 modified by Weiss '377 has a processor that can conduct 

couponing activities with vouchering activities and now with Katz, this combination 

allows for these activities to be done in series; see fig, 7; paragraph [0068]). 

Therefore, in view of Katz, it would have been obvious to one of ordinary skill in. 

the art at the. time the invention was made to have a processor to conduct couponing 

activities in serial with vouchering activities in order to perform the activities alone in 

respect to one another (as stated in Katz paragraph [0068]). 

Re claim 84: The teachings of Rowe '320 in view of Weiss '377 are disclosed above. 


NAN0.4975 

However, Rowe' 320 fails to disclose the gaming promotional printer, wherein the 

processor is further adapted to conduct couponing activities in parallel with vouchedng 

activities. 

00082 


-A0221- 

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communication link to generate a "comp" receipt from the reward system host (44); see 

col, 3, lines 35-55). 

However, Rowe '320 in view of Rowe '527 fails to disclose the generating of a 

voucher using voucher data in parallel with pdnting a coupon. 

However, this limitation is well known in the art as evidenced by Katz. Katz 

discloses the processor is further adapte d to conduct couponing activities in serial with 

vouchering activities (i.e. in figure 7, there are amultiplicity of steps that can be 

performed in series or parallel. Rowe '320 modified by Weiss '377 has a processor that 

can conduct couponing activities with vouchering activities and now with Katz, this 

combination allows for these activities to be done in parallel; see fig. 7; paragraph 

[0068]). 

Therefore, in view of Katz, it would have been obvious to one of ordinary skill in 

the art at the time the invention was made to generate a voucher using voucher data in 

parallel with printing a coupon in order to perform the activities together in respect to 

one another (as stated in Katz paragraph [0068]). 

9. Claims 89, 93, 94, 99, 101-103, 124, 128, 130, 134, 136-138, 153 and 162 are 

rejected under 35 U.S.C. 103(a) as being unpatentable over'Rowe '320, as modified by 

Rowe '527, and further in view of Weiss (US Pat 6511377). 

Re claim 89: The teachings of Rowe '320 in view of Rowe '527 are disclosed abm;e. 

However, Rowe '320 in view of Rowe '527 fails to disclose the gaming 

promotional printer, wherein the processor is further adapted to receive the trigger from 

00083 

Nanoptix' Summary JudgmentExhibitNo. 3 

-A0222-


#: 1003 



to the players electric account;, see figs. 1; col. 12, lines 56-64; col. 13, lines 1-37 and 

cot. 14, lines 1-23). 

Therefore, in view of Weiss '377, it would have been obvious to one of ordinary 

skill in the art at the time the invention was made to have the gaming promotional pdnter 

receives the trigger from the gaming machine controller in order to award a player with a 

promotional based on a wide variety of cdteria (as stated in Weiss '377 col. 12,'lines 56- 

64). 

10. Claims 98, 100, 104, 105,114, 115, 133, 135, 139, 140, 149, 150 are rejected 

under 35 U.S.C. 103(a) as being unpatentable over Rowe '320, as modified by Rowe 

'527, and further in view of Paulsen et al (US Pub No 200310186739). 


However, Rowe '320 in view of .Rowe '527 fails to disclose the gaming 

promotional printer,"wherein the trigger data includes a player identifier. 

However, this is well known in the art as evidenced by Paulsen et al. Paulsen et 

al discloses the trigger data includes a player identifier (i.e. in figure 5b, the player name 

(513) is used to identify the player when turning in a receipt in order to redeem an 

award from a game machine, casino kiosk or another area related to a corresponding 

casino; see fig. 5b; paragraph [0091]). 

Therefore, in view of Paulsen, it would have been obvious to one of ordinary skill 

in the art at the time the invention was made in order to have trigger data include player 

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NAN04993 

Page 49 

Rowe '320 discloses the method, wherein the variable data includes a graphical 

image (Please refer back to claim 114 for this rejection). 


Rowe '320 discloses the method, wherein the variable data includes a graphical image 

of a coupon (Please refer back to claim 115 for this rejection). 

Conclusion 

11. Applicant's amendment necessitated the new ground(s) of rejection presented in 

this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP 

§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 

CFR 1,136(a). 

A shortened statutory period for reply to this final action is set to expire THREE 

MONTHS from the mailing date of this action. In the event a first reply is filed w_thin 

TWO MONTHS of the mailing date of this final action and the advisory action is not 

mailed until after the end of the THREE-MONTH shortened statutory period, then the 

shortened statutory period will expire on the date the advisory action is mailed, and any 

extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of 

the advisory action. In no event, however, will the statutory period for reply expire later 

than SIX MONTHS from the date of this final action. 

00085 


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#: 1005 


NAN05040 

I! 

03226.000105. PATENT APPLICATION :! 


In re Application off ) 



Filed: March 3 i, 2003 ) 

For:. METHOD AND APPARATUS ) 

FOR A GAMING 


Mail Stop Amendment 


P.O. Box 1450 


Sir: 

Examiner: C. Dickerson 


Monday, July 23, 2007 

PETITION UNDER 37 C.F.R, § 1.136(a) 

AMENDMENT 

AND 

INTERVIEW SUMMARY 

In response to the Office Action dated March 21,2007, the period for 

responding having been extended to Monday, July 23, 2007 herein, please amend the 

above-identified application as follows: 

00086 

Nanoptix' Summary Judgment Exhibit No. 3 ,_ 

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I_rTERVIEW SUMMARY 

Applicant thanks the Examiner for the courtesies extended to Applicant's 

representative during a recent telephonic interview. During that interview, the Examiner 

explained his view of Rowe and how that reference was being applied in the current 

rejection. Specifically, the Examiner indicated that in his view Rowe disclosed a gaming 

machine having a printer. Furthermore, the Examiner contended that Rowe further 

disclosed that the gaming machine had a first communications lLuk to a first network which 

is arranged to carry out a credit card authorization and a second communications link to a 

player tracking network for issuing awards. In the Examiner's view, Applicant's "main 

communication port" read on the first communication link to the financial network and 

Applicant's "auxiliary communication port" read on the second link to a player tracking 

network. 

Applicant's representative submitted that Rowe may have disclosed a first 

and a second logical communication link. However, from the printer's perspective, the 

communication links were the same. That is, the gaming machine was coupled by the 

communication links and not the printer. Therefore, in order to print award receipts issued 

by the player tracking network or a value receipt issued by the financial network, the 

printer received the receipts from the game controller and not directly from either the 

player tracking network or the financial network. In the present invention, Applicant's 

main communication port couples a promotional gaming printer to a gaming machine 

controller and a separate au_iary communication port couples the gaming promotional 

printer to a promotional controller. This feature aUows the gaming promotionat printer to 

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receive coupon data directly from the promotional controller separately of the gaming 

machine controller. 

Applicant's representative then suggested that clarifying amendments could 

be madc to the claims in order to emphasize this feature of the invention although no 

agreement was reached regarding the claims. Applicant submits that the foregoing 

amendments to the claims and following remarks accurately reflect the substance of the 

possible clarifying amendments discussed with the Examiner. 

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REMARKS 

This application has been careful/y reviewed in light of the Office Action 

dated June 14, 2007. Claims 82 to 152 and 154 to 162 are pending in the application, of 

which Claims 82, 117 and 152 are independent. Reconsideration and further examination 

are respectfully requested. 

The drawings were objected to On a formality. A substitute corrected 

drawing sheet is being submitted herewith. Accordingly, Applicants respectfully request 

reconsideration and withdrawal of this objection. 

Claims 114, 115, 149, 150, 152 and 153 were rejected under § 112, second 

paragraph, as allegedly being indefinite for failing to particularly point out and distinctly 

claim the subject matter which applicant regards as the invention. Claims 114, 115, 149 

and 150 have been amended to correct their dependency, thus providing antecedent basis 

for "variable data." Claim 152 has been amended in accordance with the Examiner's 

suggestion. Claim153 has been canceled herein without prejudice or disclaimer of subject 

matter. Accordingly, Applicant respectfully requests reconsideration and withdrawal of 

this rejection. 

Claims 82, 85 to 88, 90 to 92, 95 to 97, 103, 106 to 113, 116, 117, 120 to 

t23, 125 to 127, 129, 131, 132, 141 to 148, 151, 152 and 154 to 161 35 U.S.C. § i02(e) 

over U.S. Patent No. 7,008,320 (Rowe). Claims 83, 84, 118 and 119 were rejected under 

35 U.S.C. § 103(a) over Rowe in view of U.S. Published Appln. No. 2002/0077901 (Katz). 

Claims 89, 93, 94, 99, 101 to 103, 124, 128, 130, 134, 136 to 138, 153 and 162 were 

rejected under 35 U.S.C. § 103(a) over Rowe.in view of U.S. Patent No. 6,511,377 

(Weiss). Claims 98, 100, 104, 105, 114, 115, 133, 135, 139, 140, 149 and 150 were 

rejected under 35 U.S.C. § 103(a) over Rowe in view of U.S. Published Appln. No. 

2003/0186739 (Paulsen). 

The present invention concerns a printer in a gaming machine where the 

printer is used to print vouchers for the gaming machine and to print coupons 

independently of the gaming machine. The printer is coupled to a gaming machine and a 

promotional controller by separate communication ports, thus allowing the printer to print 

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#: 1009 

coupons received directly from the promotional controller without having to receive the 

coupons indirectly through the gaming machine controller. 

Turning now to the claims, Claim 82 is directed to a gaming promotional 

printer, comprising a main communication port for coupling the gaming promotional 

printer to a gaming machine controller, the main communication port adapted to receive 

voucher data; an auxiliary communication port separate from the main communication port 

for coupling the gaming promotional printer to a promotional controller, the auxiliary 

communication port adapted to receive the coupon data directly from the promotional 

controller separately of the gaming machine controller; and a processor adapted to receive 

the voucher data from the gaming machine eontroUer via the main communication port and 

generate a voucher using the voucher data; and receive the coupon data from the 

promotional controller via the auxiliary communication port and generate a coupon using 

the coupon data. 

In contrast, Rowe discloses gaming machines 20 associated with a player 

tracking or reward system host 44. One or more communications links permit information 

to be transferred to and from each gaming machine 20 and the player tracking host 44. In 

addition, Rowe discloses that the gaming machine 20 includes at least one means for 

generating a receipt such as a receipt printer 34. Rowe further discloses that the gaming 

machine 20 may include a master gaming controller (not shown) which may inchade a bus 

with which a printer controller is associated. In this manner, the gaming controller may 

provide instructions, such as print instructions, to the printer for printing receipts such as 

"value" receipts (associated with the player's use of the gaming machine) or "award" 

receipts (associated with the player's involvement with the player tracking host.) 

Therefore, Rowe discloses that it is the gaming machine 20 and not the 

printer 34 that is coupled by communication links to the player tracking host. In order to 

print an award receipt, the player tracking host must first send the award receipt to the 

gaming machine where the gaming controller is used to drive the receipt printer to actually 

print the award receipt. Therefore, the printer 34 is ordy coupled to a single controller, 

namely the gaming machine controller, and must rely on the gaming machine controller in 

order to receive award receipts for printing. 

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However, in the present invention, a gaming promotional printer features a 

main communication port for coupling the gaming promotional printer to a gaming 

machine controller, the main communication port adapted to receive voucher data, and an 

auxiliary communication port, separate from the main communication port, for coupling 

the gaming promotional printer to a promotional controller, the auxiliary communication 

port adapted to receive the coupon data directly from the promotional controller separately 

of the gaming machine controller. No such communication ports are disclosed or 

suggested in Rowe. 

In light of the deficiencies of Rowe as discussed above, Applicant submits 

that amended independent Claim 82 is now in condition for allowance and respectfully 

requests same. 

Amended independent Claims 117 and 152 are directed to a method and an 

apparatus, respectively, substantially in accordance with the gaming promotional printer of 

Claim 82. Accord'mgly, Applicant submits that Claims 117 and 152 are a/so now in 

condition for allowance and respectfully requests same. 

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Office Action Summary Examiner Art Unit 

Chad Dickerson 2625 

- The MAILING DATE oft.his communication appears on the coversheet with the correspondenceaddress - 


Status 


WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS cOMML_NICATION. 

- Extensions of time may be available under the pmv_sinns of 37 CFR 1.136(a). In no event, however, rnaya reply be Umely _]ed 

afler Sbx (_ MONTHS f_m the rna_ing date of thl_ commun}cation. 

- If NO perlod thr reply la sP_'*.}fled above, the maxlrnuer slalutery peded will apply and will explm SIX (B) MONTHS fTom the mailing date of this cemmunicaUon, 

- Failure to i'ep_y wtthln'tbe set or extended period for reply w,l, by statute, cause Ihe appllnatfon to become ABANDONED ('35 U,S.C. § 1'33), 

An), reply i'ecslved by the Office later than three months after the malting date of thSscommunication, even If 6mely flied, may reduce any 

earned patent term adjustmenL See 37 CFR 1.704(b), 

t)_] Responsive to communication(s) filedon 21 March 2003. 

2a)O" This action is FINAL. 2b)[] This action is non-final. 

• 3)1--} Since this application is in condition for allowance except for formal matters, prosecution as to the motifs is 

closed in accordance with the-practice under Ex parle Quaye, 1935 C.D.' 11,453 O.G. 213. 

Disposition of Claims • " 

4)[-1 Claim(s) _ Is/are pending in the application. 

4a) Of the above claim(s) _ is/are withdrawn from consideration. 

5)['1 Clalm(s) _ is/are allowed. 

6)_] Claim(s) 82-162 is/are rejected, 

7)i"7 Claim(s) __ is/are objected to: 

8)r-I Claim(s) _ are subject to re.strict/onand/or election requirement. 


• 9)_ The specification is objected to by the Examiner. 

10)_;_The cJrawing(s) filed on 31 March 2003 is/are: a)[-"Jaccepted or b)J_ objected in by the Examiner. 

Applicantmay notrequestthat any objectionto thedrawing(s)be held inabeyance. See 37 CFR 1.85(a). 

Replacementdrawingsheet(s)includingthecorrectionIs requiredif the drawing(s)isobjectedto. See 37 CFR 1.121(d). 

11)i"] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO_152. 

Priority under 35 U.S.Co § 119 

12)E_]Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). 

a)i-'-[AII b)F-I Some * c)f"] None of:. 

1.F-] Certified copies of the priority,documents have been received. 

2.[-] Certified copies of the priority documents have been received in Application No. 

3.F-I Copies of the certified copies of the prioritydocuments have been received in th_s National Stage 


"See the attached detailed Office action for a listof the certified copies not received. 

Attachment(s) 

1)[] NoticeofReferencesCited(PTO-892) 

2)[] NoticeofOraflsperson*e PatentDrawingReviewiPTO-S4S) 

3)[] InfolmationDisclosureStatement(s) (PTO/SB/08) 

PaperNo(s)/MatiDateseeattachment. 

J.S. PetmntendXrc_ma_ O_lica 

PTOL-326 (Rev. 08-06) Office Action Summary 

4) [] Interview eummaq/(PTO-413) 

Paper No(s)/Mat3 Date. _. 

5) [] Notice of InformaiPatent App[iceUon 

s) [] Other:. _. 

00092 


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Pad of Paper No./Maii Date 20070301 

NAN05069 

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Case 2:10-cv-O7678-JFW-DTB Document 57-4 Filed 09i28/11 Page 35 of 38 Page ID 

#:1012 NAN05073 

Application/C0ntrol Number:. 10/405,112 

Art Unit: 2625 . 

Claim Rejections - 35 USC § 102 

Page 5 

4. The following is a quotation of the appropriate paragraphs of 35 U,S.C. 102 that 

form the basis for the rejections under this section made in this Office action: 

A personshallbe entitledto a patentunless- 

(e)theinventionwasdescribedIn (1)an'applicationforpatent,published' undersection122(b),by 

anotherfiledinthe UnitedStatesbeforethe inventionbytheapplicantfor patentor(2)a lYatent 

grantedon an applicationfor patentbyanotherfiledInthe UnitedStatesbeforethe inventionbythe 

applicant forpatent,exceptthataninternational applicationfiled'underthetreaty0efinedinsection 

351(a)shallhavetheeffectsfor purposesof thissubsectionofan applicationfiledinthe UnitedStates 

onlyiftheinternationalapplicationdesignatedtheUnitedStatesandwaspublishedunderArticle2i(2) 

of suchtreatyintheEnglishlanguage. 

5. Claim 82, 85-68, 90-92, 95-97, 103, 1'06-113, 1'16, 117,120-i23, 125-127, 129, 

131,132, 141-148; 151,152 and 154-161 are rejected under 35 U.S.C. 102(e) as being 

anticipated by Rowe et al (US Pat 70"08320). 

Re claim 82: Rowe '320 discloses gaming machine with receipt generation capabilities, 

comprising: 

an auxiliary communication port coupled to a promotional controller (44) (1.e. the 

gaming machine (20) has one or more communication links which are connected to the 

reward system host (44), which performs as a promotional controller. With the 

communication link capable of being wired, then it is inherent that there is a comm poi't 

associated.with the wire to connect the gaming machine (20) to the reward system host 

(44). With a wired configuration of the system, there must be some communication port 

associated with receiving information on the gaming machine (20). Therefo,'e, the 

feature of having an auxiliary communication port is inherent to the system; see figs. 1 

and 2; col. 4, lines 4-_18), the auxiliary communication port adapted to receiv.e coupon 

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#:1013 

Application/Control Number: •10/405,112 Page 28 


6. Claims 83, 84, 118 a]nd 119 are rejected under 35 U.S.C. 103(a) as being 

unpatentable over Rowe '320 in view of Katz (US Pub No 2002/0077g01). 

Re claim 83: The teachings of Rowe '320 are disclosed above• 

However, Rowe' 320 fails to disclose the gaming promotional printer, wherein the" 

processor is further adapted to conduct coupo_ing activities in serial with vouchering 

activities. 

However, this is well known in the art as evidenced by Katz. Katz discloses the 

processor is further adapted to conduct couponing activities In serial with vouchering 

activities (i.e. in figure 7, there are a multlplicity of steps that can be performed in series 

or parallel. Rowe '320 modified by Weiss '377 has a processor that can conduct 

couponing activities with vouchedng activities 'and now with Katz, this combination 

allows for these activities to be done In series; seefig. 7; paragraph [0068]). 

Therefore, in view of Katz, it would have been obvious "toone of ordinary skill in 

the art at the time the invention was made to have a processor to conduct couponing 

activities in serial with vouchering activities in order to perform the activities alone in. 

respect to one another (as stated in Katz paragraph [0068]).. 

Re claim 84: The teachings of Rowe '320 in view of Weiss '377 are disclosed above. 

However, Rowe' 320 fails to disclose the gamingpromotional printer, wherein the 

processqr is further adapted to conduct couponing activities in parallel With voucherlng 

activities.. 

• However, this is well known in the art as evidenced by Katz. Katz discloses the 

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master controller for contro!ling, the operations of the gaming machine (20) which 

receives commands through a communication link to generate a "¢omp" receipt from the 

reward system host (44);see col. 3, lines 35-55). 

However, Rowe '320 fails to disclose the generating of a voucher using voucher 

data in parallel with generating a coupon. 

However, this limitation is well known in the art as evidenced by Katz. Katz 

discloses the processor is further adapted to conduct couponlng activities in serial with 

vouchering activities (i,e..in figure 7, there are a multiplicity'of steps that can be 

performed in series or parallel. Rowe '320 modified _y Weiss '377 has a processor that 

can conduct couponing activities with vouchering activities and now with Katz, this 

combination allows for these activ'ities to be done in parallel; see fig. 7;paragraph 

[0068]). 

Therefore, in view of Katz, it would have been obvious to one of ordinary skill in 

the art at the time the invention was made to generate a voucher using voucher data in 

parallel with generating a coupon in order to perform the activities togetherin respect to 

one another (as stated in Katz paragraph [0068]). 

7. Claims 89, 93, 94, 99, 101-103, 124, 128, 130, 134, 136-138, 153 and 162 are 

rejected under 35 U.S.C. 103(a) as being unpatentable over Rowe '320 in view of Weiss 

(US"Pat 6511377). 

Re claim 89: The teachings of Rowe '320 are disclosed above, 

However, Rowe '320 fails to disclose the gaming promotional printer,' wherein the 

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Page 42 

promotional based on a wide variety of criteria (as stated In Weiss '377 c01. 12, lines 56- 

64). 

8. Claims 98, 100, 104, 105,114,'115,133, 135, 139, 140, 149, 150 are rejected 

un'der 35 U.8.C. 103(a) as being unpatentable over Rowe '320 in view of Paulsen et al 

(US Pub NO 2003/0186739). 

Re claim 98: The teachings of Rowe '320 are disclosed above. 

However, Rowe '320 fails to disclose the gaming promotional printer, wherein the 

trigger data includes a player identifier. 

However, this is well known in the art as evidenced by' Paulsen et al. Paulsen et 

al discloses the trigger data includes a player identifier (i.e, in figure 5b, the player name 

(513) is used to identify th'e player when turning in a receipt in order to redeem an 

award from a game machine, casino kiosk or another area related to a corresponding 

casino; see fig. 5b; paragraph [0091]). 

Therefore, in view of Paulsen, it would have been obvious to one of ordinary skill 

in the art at the time the invention was made in order to have trigger data Include player 

identifier in order to have a player's identity verified upon redeeming the prize from the 

casino (as stated in Paulsen paragraph [0092]). 

Re claim 100: The teachings of Rowe '320 are disclosed above. 

However, Rowe '320 fails to disclose the gaming promotional printer, wherein the 

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Case 2:10-cv-O7678-JFW-DTB Document 57-5 Filed 09/28/11 Page I of 5 Page ID 

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WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4t00 

Facsimile: (775) 333-8171 


E-Mail: ayowell @watsonroUnds.com 



CISLO & THOMAS LLP 

1333 2 n_Sta'eet, Suite 500 


Telephone: (310)451-0647 

Facsimile: (310) 394-4477 

E-Mail: dan@cislo.com 


Attorneys for Defendant/Counterclaimant Nanoptix, Inc. 


V. 


NANOPTIX, 1NC, 






DEFENDANT NANOPTIX, INC.'S 

NOTICE OF F.R.C.P. 

30(b)(6) DEPOSITION OF 


PLEASE TAKE NOTICE that on June 29,2011, at 9:00 a.m., at the offices of CISLO & 

THOMAS, 1333 2"a Street, Suite 500, Santa Monica, CA 90401, Defendant/Counterclaimant 

Nanoptix, hlc. ("Nanoptix"), by and through its attorneys of record, will take the deposition of 

Plaintiff/Counterdefendant FutureLogic, Inc. ("FutureLogic") pursuant to Rule 30(b)(6) of the 

Federal Rules of Civil Procedure. 

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Said examination will be upon oral examination, pursuant to the Federal Rules of Civil 

Procedure, before an officer authorized to administer oaths, and will also be recorded by 

stenographic means and videotaped. The deposition will continue from day-to-day, excluding 

holidays and weekends, until completed. You are invited to attend and cross examine. 

Pursuant to Fed, R. Civ. P. 30(b)(6), FutureLogic shall produce for deposition one or more 

officers, directors, managing agents, employees or other persons who can testify on its behalf 

with respect to the topics set forth herein, and the person(s) so designated shall be required to 

testify as to each of those matters known or reasonably available to FutureLogic. FutureLogic is 

also requested to provide counsel for Nanoptix with written notice at least three (3) days prior to 

the date of the deposition of the name(s) and position(s) of the designee(s) who will testify on 

behalf of FutureLogic and to identify the matters to which each designee will testify. 

Definitions 

A. "FutureLogic," You" or "Your" refers to FutureLogic, Inc., and any parents, 

subsidiaries, affiliates, segments or divisions thereof, any present or former directors, officers, 

employees, agents, accountants, attorneys, and/or any other person or entity acting or purporting 

to act on its behalf or for its benefit with respect to the subject matter of this litigation. 

B. "Nanoptix" refers to Nanoptix, Inc. 

C. "'855 Patent" refers to United States Patent No. 7,594,855. 

30(b)(6) Deposition Topics 

(1) All facts and circumstances relating to the prosecution of the '855 Patent, 

including the office actions and responses thereto set forth in the file history. 

(2) All facts and circumstances relating to the conception and reduction to practice of 

the claimed inventions of the '855 Patent. 

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/// 

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(3) All facts and circumstances relating to any prototypes of the printers claimed in the 

'855 Patent, including their design, development, use and operation by FutureLogic or any 

third parties. 

(4) The differences between the '855 Patent claims asserted by FutureLogic and the 

Rowe, Katz, Weiss, Paulson, Nicholson, Luciano and Kelly references cited in the file 

history. 

(5) The facts and circumstances as to why the Payeheckl and EZ-Load products are 

not accused of infringement in this action. 

(6) The costs, revenue, and gross and net profits for the Gen 3 and Gen 2 Universal 

printers that FutureLogic contends are within the scope of the '855 Patent claims. 

(7) The marketing, advertising, use and sale of the Gen 3 and Gen 2 Universal printers 

that FutureLogic contends are within the scope of the '855 Patent claims, including the 

initial dates for each of those activities. 

(8) All agreements that relate to or license the '855 Patent to any party. 

(9) All agreement(s) with TransAct Technologies, Inc. 

(10) All licensing communications concerning the '855 Patent with any third party. 

(11 ) All facts and circumstances related to whether or not any FutureLogic product has 

been marked with the '855 Patent number, including the Gen 3 and Gen 2 Universal 

printers that FutureLogic contends fall within the scope of the '855 Patent claims. 

-3- 

00099 

Nanoptix' Summary JudgmentExhibit No. 4 

-A0238-

• Case 2:10-cv-07678-JFW-DTB Document 57-5 Filed 09/28/11 Page 4 of 5 Page ID 

#:1019 

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(12) The structure and operation of the Gen 3 and Gen 2 Universal printers that 

FutureLogic contends fall within the scope of the '885 Patent claims. 

Dated: May 24, 2011 By:/sl Michael D. Rounds 


California Bar No. 133972 

-4- 

WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-817 l 


Attorney for Defendant/Counterclaimant 

Nanoptix, lnc. 

00100 


-A0239- 

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#: 1020 

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Pursuant to Fed. R. Cir. P. 5(b), I certify that I am an employee of Watson Rounds, and 

that on this date, a copy of the foregoing DEFENDANT NANOPTIX, INC.'S NOTICE OF 

DEPOSITION OF F.R.C,P. 30(b)(6) DEPOSITION OF FUTURELOGIC, INC. has been 

served upon the following counsel of record via electronic and first-class mail: 

Brett Williamson 


David P. Dalke 

ddalke@omm.com 

Michael L. Meyers 

mmeyers@omm.com 

O'MELVENY & MEYERS LLP 

610 Newport Center Drive, 17 tl_Floor 


Dated: May 24, 2011 By: /.s/RQbert Hunter 


-5- 

00101 


-A0240-

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Case 2:10-cv-O7678-JFW -DTB Document 57-8 

#: 1028 

March 7, 1996 

Mr. Dave Uland 

Interleave Systems 

1720 James Parkway 

Heath, OH 43056 

Dear Dave, 

FUTURELOGIC nc. 


This letter is a recap of my understanding of our conversation last week concerning a business 

opportunity at Coca-Cola. To facilitate sales of your media into the account, you have 

determined that a printer sub-assembly solution is needed by the customer. The assembly 

would be produced by Futurelogic and sold to Interleave Systems which would then resell it to 

Coke. Specifications for the assembly are to be finalized through meetings between Futurelogic, 

Interleave Systems and Coca-Cola. Futurelogic has agreed to help in finalizing the specification, 

at a cost itemized below, and to provide a quotation for prototype and production units after 

review of the final specification. If you could issue a purchase order for the amount listed below, 

we can proceed with plans for the meeting on March 20th at Coca-Cola. If there is additional 

work needed on the specification prior to the meeting, you can also include those as a separate 

block of hours at the rate listed below. Should anything deviate on the estimate, I will inform you 

as soon as I know. 

Meetinq. Expense Estimate 

Plane fare: 

Lodging (2 nights): 

Meals (2 days): 

Car (2 days): 

Time(20hrs_.$85/hr, 8hr cap/day): 

Total 

Additional specification work: $85/hr 

$1200.00 (discount may be available) 

$ 300.00 

$ 100.00 

$ 130.00 

$17oo.oo 

$3430.00 

If this is different than your understanding, please let me know; otherwise, I look forward to 

working with you on what appears to be a nice opportunity for both companies. Thank you. 

Sincerely, 

Mark Meyerhofer 

President, Futurelogic 

425 E. COLORADO ST., STE 670, GLENDALE, CA 91205 

818.244.4700 Fax818.244.4764 

CONFIDENTIAL oo,og 7 ?:[ 


-A0248- 

FL0022026

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Highly Confidential- Outside Counsel Only OOl1o 


-A0249- 

FUT00078769

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....................... Case-2:'tO'-cwO?'678-J FW=DTB -Document57=10"FiledO9128tl-_-'-'P_eflD 

#: 1030 

EDUARDO M, CARRERAS 

SENIOR pATENT AND TECHNOLOGY COUN_q_L 

t.i:GAL OtVI_ION 

Mr. Mark Meyerhofer 

President 

Futurelogic, Inc. 

425 E. Colorado Street, Ste. 670 

Glendale, CA 91205 

Re: Non-Disclosure Agreement 

Dear Mr. Meyerhofer: 

COCA" COI..A PLAZA 

A"tLAN TA, GEORGIA 

March 31, 1997 

ADDRES._ REPLY 'TO 

P, O. DRAWER 1784 

ATLANTA, GA 3030f 

404 _7G.aET;_ 

FAX; 40_ _7(_'_414 

In conjunction with recent discussions, our Company has disclosed and it is anticipated in the 

future that it will disclose to your company or your company will observe, or come in contact 

with certain confidential information that is the property of our Company. This information will 

include, without limitation, certain proprietary items relating to vending machines, 

In consideration thereof, it is our understanding, that except as hereafter specifically anthorized 

in writing by our Company, your company shall not disclose to any party for a period often (10) 

years from the date of disclosure: (a) the fact that it is assisting our Company in this matter; 

(b) any confidential information heretofore or hereafter disclosed by our Company to your 

company or that your company observes or comes in contact with, not in the possession of your 

company prior to the date of such disclosure, observance or contact; or (c) any marketing, 

financial or technical information developed or generated by your company for our Company at 

our Company's request and direct or indirect expense. Your company shall neither use nor 

furnish to any party any equipment or material embodying or made by the use of such 

information; provided, however, that: 

1. Should any of the aforesaid information be published or otherwise made available to the 

public through sources which are entitled to disclose the same, and should your company 

demonstrate to our Company that it has obtained said information from a source available to the 

publit_, then in that event, your company shall be free with respect to flxis understanding to 

disclose said information to arty pally; and 

2. Your company understands that nothing herein shall be construed to grant any right or 

license under any intellectual property rights (patents, trademarks, copyrights and trade secrets) 

of our Company. 

Highly Confidential - Outside Counsel Only o0111 


-A0250- 

FUT00078767

..............Case2:10-cv-07678-JFW-DTB Document57-10 Filed 09/28/11• Page2 of2-Page ID.......... 

#:1031 

Futurelogi¢,_c. 

March 31, 1997 

Page 2 

This Agreement shall be interpreted reader the laws of the State of Georgia, 

Will you please indicate your company's concurrence in the foregoing understanding by signing 

and returning to us the enclosed duplicate of this letter. Please send the signed copy to the 

attention ofLitlda Ahn at flae address above (tel no 404-676-4909). 

Accepted this 7 _ day of 

Aeg.tt.. ,199_7. 

FUTUI_ELOGIC, INC.., A /_ 

PrintName: MAR/


#: 1032 

KIOSK THERMAL PRINTER 

PROJ ECT LB970411-01 

FUNCTIONAL PRODUCT SPECIFICATION 

Revision: 0.1 

Interleave Systems, Inc. 

Start Date: March 23, 1997 

Printout Date: April 17, 1997 

CONFIDENTIAL 

PROPRIETARY 

This document is released for 

information only. Its reproduction 

in whole or in part or its 

dissemination to third parties 

without the express written 

consent of Interleave Systems, 

Inc. is prohibited. 

CONFIDENTIAL 00113 


-A0252- 

FL0022027

Case 2:10-cv-07678-JFW-DTB Document57-11 Filed 09/28/11 Page2 of 16 Page ID 

#:1033 

P_ 

The purposeof this documentis to provideall concernedpartieswith the necessary 

functionalspecificationsdescribingthe InterleaveSystems,Inc. KioskThermal Printer 

product. 

I havereadthisspecificationandagreethatit correctlyrepresentsthedesiredfunctional 

requirementsforthisproduct. 

Date 

Dave Uland "Interleave Systems, Inc. 

Date 

Joe Smith Interleave Systems, Inc. 

Date 

Joe Smith Interleave Systems, Inc. 



-A0253- 

FL0022028 

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#: 1034 

1.0 Introduction 

1.1 Block Diagram 

2.0 Thermal Print Mechanism 

2.1 Thermal Print Head 

2.2 Feed Mechanics 

2.3 Sensors 

TABLE OF CONTENTS 

3.0 Interface Controller Electronics 

3.1 Functions 

RS232 Program Port 

3.2.1 Program Port Protocol 

MDB Port Interface 

MDB Interface Connectors 

MDB Transmitter/Receiver Specifications 

3.3.2.1 Slave Receiver Parameters 

Slave Transmitter Parameters 

Master/Slave Connections 

MDB Communications 

3.3.3.1 EVD Command Definitions 

3.4 Option Switch Settings 

3.5 Pdnted Circuit Board Physical Description 

4.0 Paper Path 

4.1 Thermal Paper Stock 

4.2 Paper Loading 

5.0 Printer Operation 

5.1 Power Requirements 

5.2 Receipt Printing 

5.3 Self Test 

5.4 Parameter Programming 

6,0 Errors and Exceptions 

7.0 Industrial Design 

8.0 Reliability/Serviceability 

9.0 Safety and Agency Compliance 

10.0 Shipping and Environmental 

Appendix A - References 

12.0 Appendix B - Cleaning 



-A0254- 


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#:1035 

1.0 Introduction 

The Kiosk Thermal Printer is a 58ram wide (close to dollar bill size) thermal printer for 

delivering direct thermal coupons. 

The key features of this product include: 

Small size of approximately d=4,5" x w=7.25" x 1=7.75". 

RS232 port for on-site programmability of site specific variables. 

Delivers approximately XX 5 inch receipts per 6 inch roll of thermal paper. 

1 - 2 inch per second print speed for fast receipt delivery. 

1.1 Block Diagram 

The block diagram for the printer is shown in Figure 1. It consists of a thermal printer 

mechanism, an interface controller board, a paper roll holder and a paper exit path. 

The thermal printer mechanism contains a thermal print head and the motor and roller 

mechanics for feeding the paper. Sensors on the printer mechanism include an 

optical paper presence detector and a head up switch. The controller interface board 

contains all the electronics for running the pdnt mechanism. 

Communizations 

Interface Electronics Controller ] 

Finished Coupon 


Figure t. 


-A0255- 

LM°_'_m I I _..\ 

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#: 1036 

2.0 Thermal Print Mechanism 

The thermal print mechanism is a Seiko model LTP3245 Thermal Printer Mechanism. 

2.1 Thermal Print Head 

The pdnter mechanism contains a thermal print head is a 384 dot thermal 

element. It has a 2.28 inch (58mm) wide paper path with a print width of 1.89 

inches and a resolution of 203 dots per inch. Print speed is rated at 1 to 2 

inches per second. 

2,2 Feed Mechanics 

The feed mechanics consist of a geared stepping motor driving a rubber platen 

roller. Feed rate is approximately 2 inches per second. On the side of the roller 

is a manual feed knob for assistance in paper loading. Also next to the manual 

feed knob, there is a lever to raise the print head off the platen to allow for 

pushing the paper through the mechanism and clearing jams. 

2.3 Sensors 

There are three sensors on the print mechanism. The paper presence sensor is 

an infrared reflective device located in the bottom of the mechanism at the 

paper entrance. The head up sensor is a mechanical switch that is cam 

actuated by the head up lever. Head temperature detection is via a thermistor. 

All three sensors signal the controller interface electronics to inhibit printing. 

3.0 Interface Controller Electronics 

The interface controller electronics is responsible for communicating with the host 

controller and managing the print mechanism and paper cutter. The primary functions 

are explained below. The controller must be of a page mode printing type architecture 

which supports coupon creation and storage in the controller memory. There must be 

some type of non-volatile memory, resident on the controller, to allow retention of 

coupons in the event of power loss. 

3.1 Functions 

The main function of the controller electronics is to provide a communications 

interface with the vending machine controller (VMC), the program port, and to 

control the thermal printer mechanism via the thermal head and ddve motor. It 

controls speed and print density using a power monitoring function to prevent 

overload of the system power supply. Further, it monitors the print mechanism 

sensors to inhibit or modify printing as necessary. 



-A0256- 

FL0022031

Case2:10-cv-07678-JFW-DTB Document57-11 Filed 09128/11 Page 6 of 16 Page ID 

#:1037 

3.2 RS232 Program Port 

To facilitate configuration of the unit at production time, a separate program port 

will be required. The program port is an RS232 serial interface utilizing a 6 pin 

RJ-11 style connector with the pin out shown in Table 1. The program port will 

allow complete reloading of the controller firmware as well as supporting 

features such as downloadable fonts, graphics. Programming and creation of 

coupons must also be supported. Signal levels and protocol will conform with 

EIA-232 standards listed below. 

Table 1: RS232 Program Port w/R J-11 

Pin # Pin Name Description 

1 NC No connection 

2 RxD Receive Data 

3 TxD Transmit Data 

DTR 

GND 

CTS 

I/O 

O 

Data Transmit Ready O 

Signal Ground 

Clear to Send I 

3.2.1 Printer Program Port Protocol 

The printer program port uses an RS232 asynchronous protocol defined 

below. The program port may be ddven from a personal computer sedal 

port if configured to the settings shown. 

Data transmission: 

EIA-232 Baud Rates: 

Synchronization: 

Flow ctrl handshaking: 

Software: 

Modem Support: 

Signal Requirements: 

Transmission Media: 

Cable length: 



-A0257- 

Start bit: 1, Data bits: 8, Parity: none, 

Stop bits: 1. 

9600 

START/STOP Asynchronous 

Hardware (Data Set Ready, Clear To 

Send) 

ACK 

None 

Electrical and mechanical specification 

per EIA-232. The total load 

capacitance per driver, including the 

cable, should not exceed 3O0pF. 

Shielded cable, RJ-11 six conductor 

connector. 

Not to exceed 10 ft (~3 m). 

FL0022032 

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Case 2:10-cv-07678-JFW-DTB Document 57-11 Filed 09/28/1i Page 7 of 16 

#: 1038 

3.3 MDB Port Interface 

The main interface port the printer is through the Multi-Drop Serial Bus (MBD) 

connector. The MBD is a proprietary interface defined in the document 

"Electronic Vending Standard, Revision 1 Draft - Peripheral Communication". 

This interface provides both data and power connections. The printer will be 

considered a slave device on the interface and would respond to the External 

Vending Device commands listed in section 3.3.3. 

3.3.t MDB Interface Connectors 

Connectors for the interface are specified in section 3.0 of the standard 

defines the connectors used. The connector is a Molex 6 pin locking 

header with a pin out as shown in Table 2. The part numbers for this 

connector are as follows: 

Molex 39-01-2060 

Molex 39-00-0065 

Pin # 

1 

2 

3 

4 

5 

6 

Table 2: MDB Interface Pin Out 

Pin Name Description 

34VDC Power supply 

34VDC return Ground 

n/c Not used 

(6 circuit plug, PCB mount) 

(PCB socket terminals) 

Master Receive Receive line (Rx) 

Master Transmit Transmit line (Tx) 

Common Rx/Tx Common 



-A0258- 

Page ID 

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#:1039 

3.3.2 MBD Transmitter/Receiver Specifications 

Section 2.0 of the standard addresses the I/O specifications of the port. The 

printer is considered a slave unit and has the properties shown below. Refer 

to the latest dratl of the standard to insure accuracy. 

3.3.2.t Slave Receiver Parameters 

Minimum input current active (15mA @ 1V) 

Maximum input current inactive 100uA 

3.3.2.2 Slave Transmitter Parameters 

Minimum sink current active (15mA @ 1V) 

Maximum input current inactive 30uA 

3.3.2.3 Example Master/Slave Connections 

Refer to section 5.0 of the Standard to see an example of a Master/Slave 

Connection. A typical part for interfacing to the MBD is the Motorola 4N28. 

MDB Communications 

Communications protocol and commands are covered in section 5.0 of the 

"Extemal Vending Device" specification. The commands supported by the 

pdnter controller are defined in 3.3.3.1. Since many of the commands are not 

intended for a printing device, a subset of the commands will be supported. 

EVD Command Definitions 

The following commands are supported and perform as indicated. 

(TBD subject to review/modification of EVD specification) 



-A0259- 

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#: 1040 

3.4 Switch Settings 

The definitions of the various option settings for the printer are shown below. 

The MBD specification defines the device address for all External Vending 

Devices (EVDs) of which the printeris a member. Up to 2 printers may be 

present on the MBD interface simultaneously; option switch setting #2 allows 

the printer to be configured as printing device #1 or printing device #2. 

SW# 

1 

Description Default 

Chooses whether the printer communicates via Open 

MBD port or RS232 program port. 

Open=MBD port, Closed=Program port. 

Chooses which device address the printer Open 

responds to. 

Open = Printer 1; Closed = Printer 2. 

3,5 Printed Circuit Board Physical Description 

The printed circuit board (PCB) will contain all the control and interface 

electronics as well as the interface connectors for the print mechanism, MBD 

port and program port. The circuit board is X" x Y" in size. Connectors and 

mounting holes are located in the positions shown in Figure 4. 

( To Be Determined ) 

Figure 4. 



-A0260- 

Page ID 

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Case2:10-cv-07678-JFW-DTB Document57-11 Filed09/28/11 Page 10 of 16 Page ID 

#:1041 

4.0 Paper Path 

4.1 Thermal Paper Stock 

The printer will accept a 6" roll of direct thermal paper wound on a 1" core. 

Acceptable paper thickness ranges from 65urn to 95 urn. 

4.2 Paper Loading 

Paper loading will be simple to accomplish. Paper will be loaded onto the paper 

spindle by the operator and presented to the mouth of the pdnter mechanism 

assembly. The system will automatically operate the feed motors upon 

detection of the new paper and pull the paper through the printer assembly so 

that the unit is ready to print. Figure 5 demonstrates loading. 

When paper is detected, 

automatic loading will 

pull the paper through. 

Figure 5. 

5.0 Operating Description 

The pdnter has no accessible operator interface points. 


A single 34vdc power supply pin is available for printer system power. The 

rating of the power supply is 34vdc @ 2.0A maximum. The printer system will 

support intelligent power management to insure that this limit is not exceeded at 

the input. 



-A0261 - 

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#: 1042 

5.2 Receipt Printing 

Figure 5 shows a typical receipt which has been printed on ~2" wide paper in a 

landscape orientation. In order to support ease of receipt creation and improve 

the "look" of the receipt, the following capabilities must be supported by the 

printer assembly: 

Page mode layout language for "paste up" style presentation 

Multiple resident fonts capable of printing simultaneously in 0°, 90°, 180 ° and 

270 ° orientations. 

proportional fonts (laser printer style) 

download-able proportional fonts 

up to 8 1"x1" download-able, non-volatile graphics. Graphics must be in a 

format easily supported by PC based artwork packages. 

line and box draw commands 

barcode support, 0° and 90° orientation 

r[_ , Text here ! 1 

Border graphic will give the 

feel of the dollar bill 

Figure 5. 

11 

direction of paper travel 



-A0262- 

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Case2:10-cv-07678-JFW-DTB Document57-11 Filed09/28/11 Page 12 of 16 Page ID 

#:1043 

CONFIDENTIAL 

5.3 Self Test 

Self test is initiated by pressing and holding the reset and feed buttons 

simultaneously. Self test information includes printer identification, location 

information, program port parameters, DIP switch settings, any errors detected, 

and other information (TBD). A typical self test print is shown in Figure 6. See 

the section on Errors and Exceptions for information on instances where printing 

may be inhibited. 

Printer: XYZ 

Firmware: v1.0 

Location: xxxxxxx 

Program Port Settings: 

Baud: 9600 

Handshaking: hardware 

Stop bits 1 

Dip Switch Settings: 

SWl - power 50% 

SW2 - xxxx yyyy 

L___. 

Figure 6. 

5.4 Parameter Programming 

Location specific parameters are programmed using a PC connected to the 

program port. See Appendix A for details on programming. 

12 

00124 


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#: 1044 

5.5 Print Head Cleaning 

Print head cleaning is not necessary under normal usage, but should be done using 

Seiko printer cleaning strip XXXXX-XXXX if print degradation occurs. Printhead 

cleaning is accomplished by removing the paper from the print mechanism and 

feeding the cleaning strip through the printer. See Appendix B for directions. 

6.0 Errors and Exceptions 

There are no indicators for printer error such as LED's or a buzzer in the printer. 

Receipt printing will only be inhibited for 4 reasons: 

Power failure; 

Paper Feed error; 

Buffer memory full; 

Internal printer failure. 

If the printer fails to print a receipt upon customer request, the user can diagnose the 

error by following the steps below. 

Step1 o Power Check 

Look at the power connector to see that it is securely plugged into the printer 

receptacle. 

Inspect the widng harness to check for loose or disconnected wires. If the 

wiring harness is damaged, discontinue all machine operations and call a 

service technician. 

e 

Step2 - Paper Feed Check 

Check to see if there is paper lett on the paper roll. If not, add paper 

according to the instructions in the section on Paper Loading. 

If paper is present use the manual knob on the side of the printer mechanism 

to insure that paper feeds freely in the mechanism. Clear any jams and 

reload paper. 

Make sure that the printable side of the paper is facing the rear of the printer 

as shown in Figure 4. 

Use the feed button to insure that the printer mechanism feeds paper. 

Step3 - Internal Error Check 

If the printer still fails to print even the self test, call a service technician. 

If the user fails to clear the printer error with the above steps a service call is required. 

The service technician can inspect and/or replace the printer as necessary. The 

programming port and PC software provided by Interleave Systems, Inc. can provide a 

detailed diagnostic read out for internal printer errors. 

7.0 Industrial Design 

Size - Approximately 7.75" x 7.25" x 4.5" 



-A0264- 

13 

Page ID 

FL0022039

Case 2:10-cv-07678-JFW-DTB Document57-11 Filed09/28/11 Page 14 of 16 Page ID 

#:1045 

Weight - Approximately X pounds excluding paper roll. (TBD). 

8.0 Reliability/Serviceability 

MTBF - X years (TBD) 

Warranty Period - XX days (TBD) 

There are no user serviceable parts in the printer except paper roll replacement. 

9.0 Safety and Agency Compliance 

The following agency and safety certifications are required: 

FCC Class A 


34vdc @ 2A maximum 

11.0 Shipping and Environmental 

Operating Environment : 40°F to 104°F (5°C to 40°C), 5% to 85% RH noncondensing. 

(Maximum wet bulb temperature = 27°C) 

or 

32°F to 140°F (0°C to 60°C), 5% to 95% RH noncondensing. 

(Maximum wet bulb temperature = 29°C) 

Storage Environment" -4°F to 140°F (-20°C to 60°C), 10% to 90% RH noncondensing. 



-A0265- 

14 

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CONFIDENTIAL 

Document 57-11 Filed 09/28/1t 

#: 1046 

Appendix A - References 

15 

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-A0266- 


FL0022041

Case2:10-cv-07678-JFW -DTB 

CONFIDENTIAL 

Document57-11 Filed 09t28/11 

#:1047 

Appendix B - Cleaning Directions 

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00128 

Nanoptix, Summary Judgment ExhibitNo. 9 

-A0267- 

Page 16 of 16 PagelD 

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bwilliamsonf_,omm.com 

MICHAEL L_ MYERS (S.B. #240652) 

mmyers_,omm.com 



Newport-Beach, CA 92660-6429 

Telephone: (949) 760-9600 

Facsimile: (949) 823-6994 


FUTUIIELOGIC, INC. 


Corporation, 

V. 



Plaintiff, 


Corporation, 

Defendant. 

PROPOUNDING PARTY: 

RESPONDING PARTY: 

SET NUMBER: 



PLAINTIFF FUTURELOGIC, 

INC.'S SECOND SUPPLEMENTAL 

RESPONSE TO NANOPTIX INC.'S 

FIRST SET OF 

INTERROGATORIES 

DEFENDANT NANOPTIX, INC. 

PLAINTIFF FUTURELOGIC, INC. 

ONE (1) 

HIGHLY CONFIDENTIAL - OUTSIDE COUNSELONLY 


-A0268- 

FUTURELOGIC'S SECOND SUPPLEMENTAL 

RESPONSE TO NANOPTIX'S FIRST SF.T OF 

INTERROGATORIES


#: 1049 

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INTERROGATORY NO. 3: 

For each claim of the PATENT-IN-SUIT, state the invention date, and 

identify all evidence supporting conception of the invention, reduction to practice 

of the invention, and diligence from the date of conception to the date of reduction 

to practice of the invention, and identify each PERSON with knowledge of any of 

the foregoing, along with all DOCUMENTS relating to the foregoing. 

RESPONSE TO INTERROGATORY NO. 3: 

FutureLogic objects to this interrogatory on the grounds set forth in its 

Preliminary Statement and General Objections above, all of which are specifically 

incorporated herein by this reference. 

Subject to and without waiving any general or specific objections set forth 

above, and to the extent FutureLogic understands this request, FutureLogic 

responds to this interrogatory as follows: 

The claims of the '855 Patent were reduced to practice before December 19, 

2000. FutureLogic constructed a number of prototype promotional printers having 

the features of the invention for experimental use, including a co-development 

project FutureLogie conducted with a soft drink manufacturer under a mutual non- 

disclosure agreement. The prototypes were operated for a period of time by 

FutureLogic and the soft drink manufacturer before December 19, 2000. The 

purpose of this operational period was to test the operation of the prototype 

promotional printers in vending machines. The evidence supporting the reduction 

to practice before December 19, 2000 is included in the file history of the '855 

Patent, Mark Meyerhofer has knowledge of the conception and reduction to 

practice of the invention of the '855 Patent. In addition, Eric Meyerhofer and Oleg 

V. Dymovsky have knowledge of the development and operation of the prototype 

promotional printers. 

SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 3: 

FutureLogic objects to this interrogatory on the grounds set tbrth in its 

00130 


-A0269- 


2 RESPONSES TO NANOPTIX'S FIRST SET OF 

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previous response above, all of which are specifically incorporated herein by this 

reference. In addition, FutureLogic incorporates by reference its original response 

to this interrogatory. 

Subject to and without waiving any general or specific objections set forth 

above, and to the extent FutureLogic understands this request, FutureLogic 

responds to this interrogatory as follows: 

The invention of the '855 Patent was conceived by September 3, 1997, and 

was reduced to practice by January 21, 1998. Above dates represent the dates 

FutureLogic will seek to prove but, by agreement of the parties, will not be used to 

exclude or impeach evidence related to conception and reduction to practice at an 

earlier time. In addition, pursuant to Fed. R. Civ. P. 33(d)(1), FutureLogic 

identifies the following documents from which infonrtation responsive to this 

interrogatory can be derived: 

FL0001877 - FL0001887, FL0002204 - FL0002210, FL0002213, 

FL0002216 - FL0002223. FL0002226 - FL0002230, FL0002236, FL0002242 - 

FL0002246, FL0002266 - FL0002269, FL0002285 - FL0002287, FL0002291, 

FL0002297, FL0002308, FL0002317 - FL0002321, FL0002330 - FL0002337, 

FL0002359 - FL0002360, FL0002372 -FL0002373, FL0002378 - FL0002379, 

FL0002451 - FL0002454, FL0002477, FL0002499 - FL0002507, FL0002517 - 

FL0002522, FL0002539, FL0002837, FL0002843, FL0002850, FL0002878, 

FL0002883 - FL0002884 FL0002924, FL0002928 - FL0002929, FL0002935, 

FL0002939 - FL0002941 FL0002944 - FL0002946, FL0002949 - FL0002951, 

FL0002960 - FL0002961. FL0002964 - FL0002965, FL0003060 - FL0003062, 

FL0003071 - FL0003072, FL0003426 - FL0003431, FL0003436 - FL0003437, 

FL0003487 - FL0003488, FL0003494, FL0003500, FL0003503 - FL0003504, 

FL0003511, FL0003518, FL0003523 - FL0003524, FL0003526 - FL0003528, 

FL0003547, FL0003554, FL0003569, FL0003582 - FL0003589, FL0003598, 

FL0003632 - FL0003643, FL0003718, FL0003939 - FL0003944, FL0004786 - 

00131 


-A0270- 

FUTURELOGIC'S SECOND SUPPLEMEN_FAL 

3 RESPONSES TO NANOPTIX'S FIRST SET OF 

INTEIh_,OGATORIES


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FL0004788, FL0004795, FL0018921 - FL0018931, FL0018934, FL0018938 - 

FL0018939, FL0018941, FL0018951 -, FL0018961, FL0018966 - FL0018967, 

FLO018981 - FL0018985, FL0018997, FL0019009, FL0019036 - FL0019041, 

FL0019050 - FL0019054, FL0019057, FL0019059 -FL0019062, FL0019390 - 

FL0019391, FL0019393, FL0019395, FL0019399 - FL0019400, FL0019406, 

FL0019411, FL0019432 - FL0019436, FL0019451 - FL0019452, FL0019460, 

FL0019502 - FL0019503, FL0019506 - FL0019507, FL0019510, FL0019522 - 

FL0019525, FL0019530 - FL0019534, FL0019550 - FL0019551, FL0019554, 

FL0019558 - FL0019560, FL0019574 - FL0019576, FL0019586 - FL0019588, 

FL0019609 - FL0019610, FL0019624 - FL0019627, FL0019650, FL0019662, 

FL0019672, 

FL0020114, 

FL0020152, 

FL0020257 

FL0020283 

FL0020324 

FL0020589 

FL0021142 

FL0021167 

FL0021207 

FL0021309 

FL0021353. 

FL0021398. 

FL0021575. 

FL0022090. 

FL0022178. 

FL0022215, 

FLO019685, FL0019691-FLOO19694, FLOO19856, FLOO20112- 

FL0020120-FL0020123, FL0020127, FL0020147-FL0020149, 

FL0020155-FL0020160, FL0020171, FL0020176-FL0020179, 

-FL0020261, FL0020263-FL0020266, FL0020277-FL0020278, 

-FL0020286, FL0020299-FL0020300, FL0020314-FL0020315, 

FL0020332, FL0020558-FL0020559, FL0020567-FL0020570, 

FL0020613-FL0020615, FL0020625, FL0021083, FL0021139- 

FL0021153-FL0021154, FL0021159-FL0021162, FL0021166- 

FL0021175, FL0021191, FL0021199 - FL0021200, FL0021206 - 

FL0021209, FL0021217 - FL0021218, FL0021224 - FL0021232, 

FL0021318 - FL0021319, FL0021334, FL0021337 - FL0021345, 

FL0021357-FL0021363, FL0021371,FL0021381, FL0021385, 

FL0021401,FL0021423, FL0021538-FL0021543, FL0021561- 

FL0021855, FL0021860-FL0021861,FL0022085, FL0022087, 

FL0022165, FL0022167-FL0022169, FL0022171, FL0022176- 

FL0022181, FL0022184, FL0022186-FL0022187, FL0022214- 

FL0022217, FL0022247-FL0022248, FL0022275-FL0022276, 

FL0022295-FL0022314, FL0022343 

00132 

Nanoptix' Summa_ Judgment Exhibit No. 10 

-A0271 - 

-FL0022344, FL0022514, FL0022565, 

FUTURELOGIC'S SECOND SUPPLEMEN'_L 

4 I_SPONS_ TO NANOPTIX'S FIRST SET OF 

INTERROGATO_ES 

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FL0022575 - FL0022576, FL0022696 - FL0022717, FL0022758 - FL0022767, 

FL0022843 - FL0022851, FL0022863, FL0022867, FL0023042 - FL0023047, 

FL0023053 - FL0023054, FL0023063 - FL0023066, FL0023089 - FL0023090, 

FL0023122 - FL0023127, FL0023280, FL0023297, FL0023308, FL0023311, 

FL0023313 - FL0023322, FL0023641 - FL0023646, FL0024305 - FL0024306, 

FL0025634 - FL0025635, FL0043652 - FL0043654, FL0281564, FL0281566 - 

FL0281571, FL0281576, FL0300320, FL0300814, FL0302742 - FL0302743, 

FL0302771 - FL0302773, FL0304817, FL0313659 - FL0313771, FL0346399 - 

FL0346400, FL0346428 - FL0346430, FL0352160, FL0352381 - FL0352463, 

FL0379104 - FL0379105, FL0399616, FLB0000063 - FLB0000080, FLB0000083 

- FLB0000084, FLB0000091, FLB0000093 - FLB0000101, FLB0000103 - 

FLB0000137, FLB0000148 - FLB0000195, FLB0000200, FLB0001049 - 

FLB0001050, FLB0002566 - FLB0002567, FLB0014281, FLB0014287 - 

FLB0014288, FLB0014648 - FLB0014651, FLB0014672 - FLB0014673, 

FLB001684! - FLB0016842, FLB0018277, FLB0018606 - FLB0018612, 

FLB0018651 - FLB0018656, FLB0018693 - FLB0018694, FL0399610 - 

FL0399615, FUT00036184 - FUT00037736, and documents identified in 

FutureLogic's Response to Nanoptix's Interrogatory No. 12, dated June 14, 2011. 

Dated: July 5, 2011 O'MELVENY & MYERS LLP 

00133 


-A0272- 

/s/Brett J. Williamson 

By: Brett J. Williamson 



FUTURELOGIC'S SECOND SUPPLF.MENTAL 

RFSPONSES TO NANOPTIX'S FIRST SET OF 

INTERROGATORIES

Case 2:10-cv-07678-JFW-DTB Document 57-12 FiLed 09/28/11 Page 6 of 6 Page ID 

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VERIFICATION 

[ am authorized to make this verification for and on behalf of FutureLogic, 

Inc. Not all of the matters in the response entitled PLAINTIFF FUTURELOGIC, 

INC.'S SECOND SUPPLEMENTAL RESPONSE TO NANOPTIX'S FIRST 

SET OF INTERROGATORIES are within my personal knowledge, and I am 

informed and believe that no officer or employee of FutureLogie, Inc. has personal 

knowledge of all such matters. All the facts stated in the above-cited response have 

been assembled by authorized employees and counsel for FutureLogic, Inc. I am 

informed and believe that the matters stated therein are true and correct, and on that 

basis verify the response on behalf of FutureLogic, Inc., reserving the right in the 

event new, additional, or different information is discovered to revise or supplement 

the response as the case may be. 

I declare under penalty of perjury that the foregoing is true and correct. 

Executed this zs_day of August, 2011, at Glendale, California. 

_ame: __J_ 

Title: Chief Executive Officer 

001 34 


-A0273- 


RESPONSES TO NANOPTIX'S FIRST SET OF 

INTERROGATORIES 

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#: 1054 

, FUTURELOGIC, INC. 

425 EastColoradoStreet Suite670 


(818) 244-4700 fax: (818) 244-4764 

wvvw.futureIoqicinc.com 

James Davis 

Engineering Information Systems 

The Coca Cola Company 

Dear Mr. Davis: 

Filed 09/28/11 Page 1 of 4 

Thank you for your recent caU regarding the CCUSA coupon printer system. As you are aware, it has 

been approximately one year since Fnturelogic developed the first generation prototypes which are 

currently being used to demonstrate concept. Since that time, we have expanded both our mechanical 

packaging and software capabilities, and I look forward to discussing these in more detail at our 

meeting. The intbnnation provided here covers the areas of advanced prototypes, beta site units and 

production units, and I hope that you will fred it complete. 

i will be at your facility on Wednesday to discuss our proposal and answer any questions. If you have 

any questions or comments ahead of this, please don't hesitate to contact me at either (818) 244-4700 

xl 3 (work) or (818) 731-5812 (cell). 

Tluuuk you for the oppoltultity to quote this system and we look forward to doing business with you. 

Best regards, 

)__._ 


President 



-A0274- 

Page ID 

HiOx /'1 Il 

FL0020967


#: 1055 

FUTURELOGIC, iNC. 

Proposal Summary.. 

The proposed CCUSA priuter is a highly customized printer which is capable of operating within the 

proprietary MDB environment. It is a complete printer system including a power supply, printer 

mechanism, paper cutter and a drop chute presentation. The printer supports a complex controller 

which can manage a data base of stored graphics and coupon templates to provide the host system with 

a powerful coupon output device. 

The CCUSA printer has four very special requirements which make it a truly custom mtit. Our 

proposal has taken all of these factors htto account so that what is proposed is a true product price; 

these have been no omissions which can lead to product tip charges after file award of the contract. 

These special requirements are: 

Atypical power supply. The um'egulated 34VDC power supply is unusual and does not 

supply adequate current, relative to rite needs ofa themml printer, unless special power 

provisious are made ni the unit: Our offe_lg contains these provisions. 

66mm paper width. The thermal printer industry is tooled around 60ram paper as a 

standard width (which is unfortunate, shtce the US dollar bill is 661mn in width) and thus 

the 66mm width is a custom requirement. Our offerhlg will meet this media width 

requirement. 

Page Printing Mode. hi order to meet the specification, the printer must have a high 

level of resident hltelligence in order to process pre-loaded coupon templates. The 

specification also calls for dov_afloadable firmware, graphics and proportional fonts. Our 

product meats and exceeds all of these reqnirelnents and with our TCL editor tool, 

provides a complete development environment specifically geared towards coupon 

development. 

Short Lead Time. Only the most agile of companies can meet the short roll out time 

frame requirements of this program. All reqnirements in the specification result ill a 

completely customized program which must be run at a rapid pace in order to meet the 

projected deadlines. Our company has a great head start in this regards due to our 

generathlg the first generation CCUSA prototypes, and in that we have all of the 

technology required already developed (with the exception of the MDB protocol), ready to 

cut and paste to create the CCUSA printer. 



-A0275- 

FL0020968 

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I Case 2:10-cv-O7678-JFW-DTB Document 57-13 Filed 09i28/11 Page 3 of 4 Page ID 

#: 1056 

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Customer Information: 

CUST NAME 

BUYER 

RFQ# 

QTY* 

IK 

5K 

IOK+ 

CONDITIONS 

PRODUCT QUOTATION 

FUTURELOGIC CONTACT I 

QUO # 

DATE 

Seiko Instruments, Inc. 1 GUST CONTACT [ Janlos Davis 

Coca Cola I BYR PH# I t BYR FAX# I 

verbal [ EXP DATE [ 6 months ] GUST # I" 1 


Coea Cola CCUSA 

PIN DESC UNIT_. 

CCUSA PRINTER with Power Supply 

KBCOK-66 Custom CCUSA printer 450,00 

KBCOK-66 Custom CCUSA printer 409.00 

KBCOK-66 Custom CCUSA printer 395,00 

2. Payment tcnns net 30 tim1 

All items non-cancelable, non-returnable within TBD days of scheduled release date 

Quantity pricing base on blanket pumhase order with minimum releases of 1,000 units. 

l i All Leadpricing time varies quoted from FOB10-16 Glendale, weeks CA 



-A0276- 

4/25/99 

] I 

FL0020969



Document 57-13 Filed 09/28/11 Page 4 of 4 Page tD 

#: 1057 

PROTOTYPE CHARGES 

FUTURELOGIC CONTACT 

NREFOR QUO # 

DATE 

CUSTOMER 

Coca Cola CCUSA 

4/25/99 

Mark Meyerhofer 1 

Coca Cola 

ITEM DESCRIPTION FEES$ 

1 KBCOK-66 17,500 

Delivery: 2 alpha systems + 2 beta systems 

2 Delivery: additional beta systems 850.00/ea. 

3 Production Phase NRE, 68,500 

Regulatory agency approvals: UL, CSA, and CE. "/'his is only due after production 

order is placed. 

_l_gulatory approvals 

NRE GENERAL NOTES: 

1. Item 3 above only due if production order is placed 

SPECIAl, NOTES: I I. 

PROTOTYPE FEES RIGHTS AND RESPONSIBILITIES DISCLOSURE 

Prototype fees are dlarged for the managenlent of the application of Futuretogic's printer teclmology including, 

but not limited to, printer design know-how, oit_cuit designs, firmware source code, software source code, 

mechanical designs and fonts ("Intellectual Property") to meet a specific Customer (issuer of fees) 

rcquirements. Fees are also charged for the support time necessary during the prototype evaluation stage. 

Consideration for thesa services entitle the Customer to the materials listed in the description column above 

under "Delivery:', and does not include Intellectual Property rights. The customer agrees to provide a written 

acceptance of the printer system provided by Futurelogic ("Production Version") prior to the release of 

production. Written acceptance and/or the release to production of the Production Version indicates the 

customer's complete acceptance of the design. 



-A0277- 

FL0020970 

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#: 1058 

FUTUNELOGIC Bnc. 

TO: James Davis, The Coca-Cola Co. 

Simi Ahluwalia, The Coca-Cola Co. 

Ken Weinaug, The Coca-Cola Co. 

Jodi HUdenbrand, The CocaoCola Co. 

CC: Dave Uland, Interleave Systems 

DT: 

RE: 

Linda Brass, Voxcom 

05103199 

Cost breakdowns and reductions 

Filed 09/28/11 


We have begun the review of the proposed design and could see a cost saving if the 

following areas were loosened in the specification: 

1. If the printer power supplied would be 24V +/- 8% @ 2A RMS, 4.5A peak, and 

2. If the width of the printer would be allowed to be 4.5" (instead of 3.8"). 

Given these changes to the specification, our preliminary findings indicate a savings of 

~$40. Coca-Cola would need to buy or specify the supply, which would subtract from the 

total savings. We will follow up with additional savings from other factors in the days 

ahead, as they become available. 

With regards to the breakdown on the $68,500 NRE charges, they are as follows: 

Testing: 

Regulatory Agency Costs: 

Production Tooling Costs: 

$19,500.00 

$28,OOO.OO 

$21,000.00 

"425E. (_OI'bRADO ST., STE 670, GLEN'DALE,CA 91205 

818.244.4700 Fax818.244.4764 



-A0278- 

FL0020982

I Case 2:10-cv-O7678-JFW-DTB Document 57-15 Filed 09/28/11 Page 1 of 1 

#: 1059 

I FUTURELOGIC Inc. r 

I 

TO: James Co. 

Davis, The Coca-Cola 

Simi Ahluwalia, The Coca-Cola Co. 

Ken Weinaug, The Coca-Cola Co. 

I Jodi Hildenbrand, The Coca-Cola Co. 

CC: Dave Uland, Interleave Systems 


I DT: 05/18199 

RE: Finalized cost reductions and clarification_ _ _ ._ 

Thank you all for your patience while we reviewe( reviewed the _e valious various asl: aspects e of )f tthe 

proposed 

I printer. I have summarized our cost reduction fin_ findings Lgs below, ant and iin addition, Idit I am 

providing clarification on several of the points thai that were ere ddiscussed scussed iin the_ nmeeting 

and in the 

earlier submitted quotation. 

I As 

As 

a 

first 

first 

point 

point 

of 

of 

clarification, 

clarification, 

I 

would 

would 

like 

like 

to 

to 

point 

point out 

Jttha' 

that 

the 

the 

apl: 

approach 

r( [th 

that we took in 

complying with section 9.4.3, of the CCUSA Coui Coupon 1Prin Printer er Spec Specification, fi )n, was to provide a 

removable/reusable packaging that would provide the necessary cushioning for each 

I removable/reusable printer while in transit. packaging Once at that the installation would provide sit site, le the theneq_ssary,'L c_shionin!l cushioning would)nin ld Ibe 

removed, the 

printer installed, and the replaced printer outfitted outfitted, with rith th._ the same _;t cushion, )n, for the return trip. 

The benefits ofthis of this approach are a reduced cost burden rden inn the prin printer (already aln accounted 

I 

• for in existing quotation) and the ability to meet the size constraints of section 9.1.4. This 

" for in existing quotation) and the ability to meet th size c _nstrainls ec 

assumed solution has also been factored into the option )tion list show shown1 below, Iw, and would 

impact both size and cost in a negative way if the approach )proa :h was ¢e deemed;d iinadequate. 

I Another point of clarification that I think needs mentioning is the ppapedmedia a me width. At the 

beginning of the discussions, the paper width started at 60mm (as noted in the 

specification) and gravitated to 66mm (dollar bill size). While the electric clltter cutter width at the 

I 60mm level is not an issue, it becomes an issue at the 66ram 66mm level :ion. c 

(see op options 2 & 3). We 

were able to source a smaller variant of the 80mm printer mechanism, nee needed led for printing 

66mm media, but the availability of smaller cutters is a problem. A manual cutJ cut/tear 

I 

approach 

approach 

licensing 

is possible though 

is possible though 

fee in the reduction 

we will need to research 

we will need to research 

shown. 

existing 

existing 

patents 

patents 

and have assumed 

and lav( 

a 

The final points of clarification are in the areas of NRE and schedule and their relationships 

I The to the thefinal options points shown. of clarification The cost costare reductions in the areas outlined of NRE are, and for schedule purposes and of dis discussion, tt cus_ eir u a 

comparison of the effects of design choices on the pricing of a production I._vel level product. 

The NREs provided in the quotation are for a single set of design objective objectives _an and are 

I 

reflected in the specified scheduling 

reflected in the specified scheduling 

commencement would have varying 

time-line. A change of direction 

time-line. A change of direction 

degrees of cost and scheduling 

after project 

after I_roj_ 

impa¢ impact [ de dependent 

upon the change of scope, and the amount of worlVtesting already performed. 

I Please review the listed options and let me know if there the re are any other question questions - I will be 

happy to provide any help or additional clarification as necessary. Thank you. 

I 425 E,-C-£)LORADO ST., STE 670, GLENDALE, CA 91205 ...... 

I 

818,244.4700 Fax 818,244.4764 



......... 

-A0279- 

Page ID 

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#: 1060 

CONFIDENTIAL 

FUTURELOGIC Inc. 

TO: James Davis, The Coca-Cola Co. 

CC: SimiAhluwalia, The Coca-Cola Co. 

Ken Weinaug, The Coca-Cola Co, 

Jodi Hildenbrand, The Ceca-Cola Co, 

Dave Uland, Interleave Systems 


FM: Mark Meyerhofer 

DT: 06/15/99 

RE: Clarifications on Pricing 

James, 

I have reviewed our recent proposal and have the following answers to your questions: 

1. Question: 

Answer: 

2. Question: 

Answer: 

3. Question: 

Answer: 

4. Question: 

Answers: 

Is printer cabling included? 

All cabling internal to the printer (i.e. controller to print mechanism, controller 

to sensors, etc.) is included. External cables for communication and power 

connections have not been Included In the quotation. 

What Is the price of the Windows TM TCL TM application? 

The Windows TM TCL TM application is provided at no charge to authorized 

users of the CCUSA printer, provided by Futurelogic. (The program is 

provided on an as-is basis and will be updated periodically to correct bugs 

etc.). Authorized users may make addifiona_ site copies; also at no charge, 

but may not distribute the program to other parties. 

Does the price include a power supply? 

The base price quoted does not include an AC4o-DC power supply. Based 

upon the specification, the original quote (04/25/99) assumed a 34VDC 

supply provided through the MDB interface. This version of the printer did 

include a DC-Io-DC converter that would perform its own internal 34VDC to 

8VDC(for an 8V rnechanism) to 5VDC conversions on-board. The second 

quote (05/19/99) showed a printer price reduction 0f$40 but assumed that a 

24VDC supply would be available. This approach has the benefit of faster 

printing speeds, because a 24V mechanism is used and a larger current 

capacity is available than through the MDB interface. 

What are the release quantities relative to the pricing quoted? 

To rnaintaJn reasonable prictn.g, we have costed the prinler based upon a 

certain number of build and ship quantities as shown below. 

Ammal I_.clease_sJ 

t_-sK __j 

5K+ 

425 E.COLORADO ST., STE 670, GLENDALE, CA 91205 

818.244.4700 Fax 818.244.4764 

00141 


-A0280- 

Page ID 

FL0021874

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A C#,¢t/m#'f,a,_r._CIl,.C_lllSf/l'ft/'tSlYtl, f_'_y 

July 16, 1999 

Mr. Mark Meyerhofer 

President 

FutureLogic, Inc. 

425 E. Colorado Street, Suite 670 


Dear Mark: 

Confirmation 

Document 57-17 

#: 1061 


This letter is to confirm that Futurelogic will complete items 1 and 2 for the custom 

Coca-Cola coupon printer (per the letter addressed to James Davis dated 4/25/99). 

Twenty-four additional beta systems will be required totaling $20,608 (with the addition of 

the real-time clock feature). Coupled with the development cost, the total fees owed by The 

Coca-Cola Company and Coca-Cola Enterprises are $41,108. 

Design and Construction 

The Coca-Cola Company has elected to go with the 66mm media size, the manual cutter, 

the addition of the real-time clock feature, and an internal port for the uploadingof 

templates via a hand-held device. A Marketing Vender door from all three of our vending 

machine manufacturers will be supplied to you shortly. The coupon printerwill reside in our 

"Feature Select Bay" area, which is located right next to the dollar billvalidator. 

_DelJver_ 

In order to initiate internal testing, early delivery of the alpha prototypes is appreciated, in 

order to expedite further internal testing, we would like the remaining 26 beta units by early 

to mid Q4 (i.e.. October/November). 

Please call me at 404-676-2355 with any questions or concerns. 

Sincerely, 

Simmy Ahluwalia 

Commercialization Engineer 

CC: Mr. James Davis 

Ms. Jodi Hildenbrandt 

Mr. Chris Oliver 

Mr. Ken Weinaug 

P.O. Drawer t734 

Altanta, GA 30301 

404 676-2121 

Highly Confidential-Outside Counsel Only 00142 


-A0281 - 

FUTO0037116

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.Case 2:10-cv-07678-JFW-DTB Document 57-18 Filed 09/28/11 Page 1 of 3 Page ID 

#: 1062 

Mr. Simmy Ahlawalia 

Commercialization Engineer, Cold Drink Systems 

The Coca Cola Compariy 

p.o. Drawer 1734 

Atlanta, GA 30301 

Dear Si mmy, 


[ am sending you a revised quotation that addresses tile evolution of the CCUSA prime_. This is Ihe same prillter 

as bet'ore, but includes the added options that were requested (note that we have assigned a new txaa number lbr 

tile printer). From our discussions, we are quoting a unit with tile following t'eatares: 

l. Meets the specification "CCIJSA Coupon Printer Technical Specification", with the options listed 

below superceding the specifiealion. 

2. 65ram media size. using l_m-fi_ld stock (this is lbe prl_per size for the bill tlcceptors); 

3. Manual patver culter.;tear operation; 

4. Rcal-time clockcaleuda_ 

5. 24VAC @ 4.5A input power lumdliag capability; 

The selection of tile AC iaput power source has resulted in additional circuitry, testing, and regulatory ageacy 

fees - tile quotaliorl has been ulxtated to reflect fhese cost impacts. The fees relating to tile prototype NRE will 

be billed in 2 phases - half now and hal fen delivery of the 2 beta units included in the NRE charges. The 

s_umuary of the production uuit cost im:_xaets, tiw tile options chosen, is ShOWn bcIow alld updated in tile unit 

i:,lqciag: 

Manual cutteWtear option: - $ t 5.00 

Real-time clock calendar: + $ 8.00 

24VAC input IX'va_er: ,_14.50 

Total Cost Delta: + $ 7.50 

In order to keep tile project moving forward, a purchase order, specifying the prototypiag fees. should now be 

issued, so that we may bill the first phase. Tbe second billiug phase will occur alter lhe beginning of the year. 

Please refer to the Prototype Disclosure on the last page, as it explains our company's policy on prototypes. An 

appropriate wording for the item descriptions iu the PO would be: 

Line Item I: 

'q_rototypin8 lees. PSA-66-CC - custona thermal printer. Fees itlclude delively of 2 alpha and 2 bell prototype 

units. Prototypes will comply with the specification - CCUSA Coat)on Printer "l'eclmieal Specification, and arc 

subject to the tenns ;rod conditions of Futurelogic's Prototype Fees, Rights, and Responsibilities Disclosure. 

Line Item 2: 

"Additional PSA-66-CC protoB'pe printers" 

lfyou have nay questions, please call Scott Shimmin or myself. Thank you. 

I-{e st resal'ds_ 

CONFIDENTIAL 

Mark Meyerbolbr 

Presitle ut 

00143 


-A0282- 

FL0023292


#:1063 

.,,:;_._._, FUTURELOGIC, inc. 

Customer Information: 


FUTURELOGIC CONTACTQUODATE 

# [ Co(:aMarkcolaMe'vcrh°t'ctl0/18, 

I999CCIJSA 

cuST NAME Coca Cola ] CUST CONTACT I Simmy Ahluwa]ia ] 

BUYER I BYR PH# I '1 BYR FAX# ] I 

RFQ# ;;crba J EXPDATE 16months I GUST# I" J 

PIN DESC UNIT 

CCUSA PRINTER with Power SUl)l)lY 

1K PSA-66-CC Custom CCUSA priutcr 457.50 

5K PSA-66-CC Custom CCUSA priater 416.50 

10K_ PSA-66-CC Ctmtom CCUSA printer 402.50 

CONDITIONS 

CONFIDENTIAL 

2. Payment terms net 30 th'm, 

3, All items non-cancelable, non-returnable within TBI_.))days of scheduled rele_e dale, 

Quantity pricing base on blanket pumhase order with minim um releases of 500 traits on 

1I, 

[000-5000 size orders, and 1,000 trait releases 

All pricingquoted FOB Glendale CA. 

Production lead time varies fi'om 14-16 weeks 

on 5000+ size ordel.'s. 

00144 


-A0283- 

FL0023293 

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#: 1064 

CONFIDENTIAL 


FUTURELOGIC COI_TACT 

NRE FORQUO# 

DATE 

CUSTOMER 

Mark Meverholbr 

Coca Cola CCUSA 

I0/18/I 999 

Coea Cola 

ITEM DESCRIPTION FEES _. 

I Prl_tolypc tees. PSA-66-CC 23,500. 

l)cliverv: 2 alpha systems -i. 2 beta systems 

2 l)elivel_: additional beta systems 850.00/ca. 

3 Testing, Production Phase NRE, aud Regulatory ageuey approvals: UL, CSA, and 78,500. 

CE (This is only due after pa)duetion order is placed). 

DeliverELregulatory approvals 

NRE GENERAL NOTES: 

1. Item 3 above only due if production order is placed 

SI_I_CL',,L NO'I'ES: [ I. 

PROTOTYPE FEES, RIGIrrs. AND RESPONSIBILITIES DISCLOSURE 

Prototype tees* are charged for tile mmmgement end applicalioi_ of Futurclogie's printer technology including. 

but not limited to, printer design ka_ow-how, circuit designs, l]rmwm'e source code, sot'tware source code, 

mechanical designs and fonts ("Intellectual ProperW") to meet a specific Customer (issuer of lees) requirement. 

Consideration tbr these services entitles tile Cl.lStC.uler to the materials listed in the description eolttlnlll under 

"DeliveJy', end does no! il_clude .[z_telleclnal Prolerly rigbts. Customer also agrees to provide a writteu 

acceptance of the printer system provided by Futul_logie ("Production Vel:'_ion") prior to the release to 

production. Written acceptance mid/or the release to production of the Production Vensiou indicates 

Customer's complete aeeeplanee of the design. 

*Fees include the tasks of design, to Customer's specifications of tbrm and function, and protob.'pe support 

necessm3, during the prototype evaluation phase. Customer approval of alpbe design concepts will be obtained 

prior to file release end construction of alpha units. Significant chmlges requested after the deliver3, of the a]pha 

units will result ia additional fees based upon tile ulaguitude of the requested chmlges. 

00145 

Nanopti_ Summa_ Judgment Exhibit No. 16 

-A0284- 

FL0023294

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#: 1065 

CONFIDENTIAL 

BOM Item 

60031'2' 

302101 

302105 

170001 

131021 

131022 

131023 

130288 

Futurelogic Shippinq Kit ChecklUst 

Shipment Date: 

Document Revision: 

Main Assembly Number: 600312 

Assembly Name: PSA-66-VM 

Number of Items: 8 

Item Description 

PSA-66-VM, main unit 

Tray. Assembly 

Plate. Front 

Power Supply 

Cable Assy_ MDB intf 

Cable Assy, Power main 

Cable Assy, Power 

splitter. 

Nut, 8-32, w/lock washer, 

"Kepps".. ............ 

ENG 600312 Shipping Kit Checklist,doc 

Unit 

Quantity 

Order 

Quantity 

24 

24 

24 

24 

1 24 

1 24 

24 

96 

Sh_hjpment 

Quantity 

00146 =_:_.1" I/ J_t 

Nanoptix' Summary Judgment _.,,,_....... r_ , - -.,.,j 

-A0285- 

Back 

Ordered 

Page ID 

04/14/2000 

Page 1 of I 

FL0020979

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Case 2:10_cv-07678-JFW-DTB Document 57-20 Filed 09128111 Page 1 o, -. 

#: 1066 

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-A0287- 

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#: 1068 


00149 


-A0288- 

FL0354688

Case2:10-cv-07678-JFW-DTB Document57-20 Filed 09/28/11 Page4 of 4 Page ID 

#:1069 

-4.i' 

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-A0289- 

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#: 1070 

CONFIDENTIAL 

Detailed Agenda fill"Coupon Printer Field Test 

Week of 4/17 

• I)aj& Time Pnrtlet_ 

Moaday 4117 8:3() am Meet at Wllmer location asld assess 

all inventory sent for lalrdwtu'o hast_dls 

B_gi_l ph.;,slcat inslallatlons of tho hardwaro 

on the vendors in ho_lse, 

Tnesday 4118 7:30 ata Begh_. install on tile vender at Duck Creek 

Conlit,,ue with the inslalllng of the hardware 

On the vtalders at Witmer Ave. 

Tl_lin Matthev,' on ¢oBpoll creation/vender 

asslgnunentltmnsfarrtng files to Pahuldatobase 

loanal_nl¢lLt_ etO,.... 

Wednesday 4/19 8:_q0 am Conlinuelmluhtg/coupon samplil_g-lesting 

"Hlursday 4/20 6:00 mu 

Friday 4/21 9;00 am 

Train 1/S oil Ihe Palm applicallon 

hislan hardveam oil mschiaos in II_ofield 

Functionally test each vender at the Wihner 

Location 

Prepare for route driver supervisor tmi_fing at 

6:3t) a.a;, n[ Deck Creek 

"['raJa service technicians at 8:30 _l.m, at the Wilmer 

lot.alien 

]_e-cap any ontst_mdJl_g issaes 

Finistl up nay mm_liaiag inslallatioa issues 

Prepare lbr installntior_ of machines inlo the field 

"rest venders for coo'eat fuactioaal operation 

00151 


-A0290- 

Royal, Simmy, Justin, 

CCE 

Roya L Simu0', Justin, 

CCE 

Royal, Simmy, Jastln 

RoyaJ, Simmy, Justil_ 

CCE 

Jodi, Matthew, Scott 

Jodl, Matthew. ScoR 

Iodk Malflle',v, Scott 

Slmaly, Royal, J_lsihl 

CCE 

Simmy. Royal, Justitl, 

CCE, Jodl, Mallhcw. 

Scott 

Matthew. Scott, Slimny 

David 

Ma!thev,!, Scott_ Simmy 

David 

Ma!Olew_ Sootl, Shinny 

David 

8hatey, CC'E 

Sim my. CCE 

Simo',y, (_CE 

FL002t204

case 2:10-cv-07678-JFW-DTB Document 57-21 Filed 09/28/11 Page 2 of 2 

#:1071 

CONFIDENTIAL 

Detailed Agenda for Coupon Printer Field Test 

Week of 4/24 

I)a(e Tfme Aetivilies Pmliei_ 

4/24 8;00 am Test remalningvenders for proper fimcllonality CCE, Sinuny 

Agree mt plml together for rc-l_ct!ting/inslafiing CC%, $immy 

veuders ill Iha field 

Have rome supervisors load flies onto tim hand-held Matthew, Simmy 

4/25 TaD Star to re-locate the vel_ders Io II'mfield CCI_, Slmmy 

4/26 TBD Conthme i0 re-locate the vcuders to the field CCE, Sit;Uuy 

4127 TBD Continue to re-locale the veaders to ll'e field CCF,, S ill'lilly 

4128 TBD Complcle re-locating :,cadets I0 fire field CCE, Simmy 

Date 

511 

5/2 

1)etailed Agenda for Coupon Printer Field Test 

Week of 5/1 

Time Acti_41tes 

8:00 ;ml Install tl!e resized ad panel graplfics/fllirsty panels 

ill all of tile vendeis in the field. 

Atldli Ih¢,s¢ vottdot_ for proper opet-alinu of Iho 

coupon prMterstCedemptioa, 

8:00 am Audit remaining venders for proper oper'dlion of 

ll',e coupon prieiors/redemplion 

00152 

Parttel_ 


-A0291- 

Matthew, Sln'arty, CCE 

Me fihe',v, Sinuny 

Malfllew, Simmy 

Page ID 

FL0021205 

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Case 2:i0-cv-07678-JFW-DTB Document 57-22 Filed 09/28/11 Page 1 of 2 

#: 1072 

CONFIDENTIAL 

to the Witmer St. location to the attention of Jim Burns for tomorrow morning 

receipt? 

What bugs me even more is that once the printer is operating, some time later it 

just stops printing until the unit is powered clown (i,e, reset). This problem 

needs to be addressed ASAP!H 

Also, they have had some problems of coupon paper jamming, thus we need a field 

retrcfittable solution to ensure that this does not compound the problems 

already being seen. 

The big concern here is that CCE does not want to see a proliferation of service 

calls relating to the printer, They are approaching the summer months which is 

the season for elevated service calls relating to cold drink equipment 

performance (i.e. refrigeration). Thus, their tachs, are going to be tied up 

servicing this equipment, My feeling is that if a high incidence of service 

calls are being performed for these printers, then CCE may elect to stop the 

test very prematurely and of course this won't bode well for FLI's future 

business. 

So, please come back to ms with an action plan, 

Thanksl 

09:57 AM 

Forwarded by Simmy Ahluwalia/US/NArrccc on 05/09/2000 

jburns@na.cokecca,com on 0510912000 09:09:03 AM 

To: Stmmy Ahluwalia/US/NNTCCC@TCCC 

co: Mark MasbillilUS/CCE@CCE, Kenneth Hart/US/CCE@CCE, Mike 

Harrod/USICCE@CCE, Rob Kaufman/USICCE@CCE, Doug Becker/US/CCE@CCE 

Subject Coupon Vendors in field. 

Gentlemen, Here Is a recap of what Ken Hart and myself come accross yesterday 

while performing the P.M, checks on the coupon vendors at these locations listed 

below, If you have any questions please give me a call, We will be back out 

today performing checks as well. Thank you. 

Avon - oafs, no problem found, working fine, 

Avon - Hastsy Tastey, found both lights solid on printer, powered down printer 

and powered back up, did not work. unplugged printer. 

Avon - 1 floor breakroom, would notvend or print coupon, powered down and 

powered back up and was working when we left. 

Cinti Museum - tach. had service call earlier on vendor for not disp, product or 

coupons, we arrived and powered down and back up and was working fine when we 

left. Mike Harrod arrived 30-45 minutes after we had left and found that vendor 

was not printing coupons. 

Riverside IGA - found printer not printing coupons, powered down and back up and 

00153 


-A0292- 

Page ID 

FL0023327


#: 1073 

CONFIDENTIAL 

was working when we left, 

St. Luke East- Cancer Center, was working fine when we arrived. 

St, Luke East - Care, no coupons, powered down and back up and was working fine 

when we left. 

St Luke East - E.R., no coupons, powered down and back up and was working fine 

when we left, 

St Luke East- Garage, was working fins when we arrived. 

00154 


-A0293- 

Page ID 

FL0023328 

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From: 

Sent: 

To: 

' CC: 

Subject: 

Scott, 


_:1 u/_. 

Matthew Hahn 

Tuesday, August 15, 2000 01:02 PM 

Slmmy Ahluwalla 

scottshimmin; mark.meyerhofer 

Re: Customer Service 

Filed 09/28/11 

I need to have a printer in my hands by no later than Monday, Aug. 21st. I 

dont care if it is the one I shipped back to you or the alpha unit. 

I have to test promotions starting next week. Also, I am still waiting on 

the stickers for the printers that I have yet to receive. 

Matthew 

Simmy Ahluwalia@TCCC 

08/15/2000 03:58 PM 

To: scottshimmin@futurelogicinc.com 

cc: mark.meyerhofer@futurelogicinc.com, Matthew Hahn/US/CCE@CCE 

Subject: Customer Service 

Scott, 

This email is on behalf of both Matthew and myself regarding our serious 

concern for the lack of customer service that Futurelogic has provided over 

the last several months. 

I realize that FLI's agreement was fulfilled with Coke upon delivery of the 

Beta printers, but if you want continued business with the Coke System, 

then on-going customer service has to be top notch. As of today, I have 

doubts about using FLI for our roll-out plans in 2001. The lack of 

follow-up and delay after delay for deliverables is extremely unacceptable. 

If this type of behavior is an example of what is to come with a 

substantial production order, then I will only be setting myself and the 

Coke System up for failure. I have/will be sourcing proposals from other 

suppliers. 

Matt has called me several times expressing his concern for FLI as a long 

term partner. And, my customer feedback will dictate Coke's strategic 

direction with the coupon printer project. Matt is in dire need of his 

alpha unit, and I need my printers back with a full analysis perfozmed on 

the units that I have sent to FLI. 

Simmy. 

CONFIDENTIAL 

00155 


-A0294- 


FL0020624


#: 1075 

I From: 

Sent: 

To: 

I Subject: 

Dave Uland 

Thursday, February 15, 2001 07:28 AM 

Mark Meyerhofer; Eric Meyerhofer 

Coca Cola Vending 

I Simi called me last night after hours. He told me that Coke has decided not 

to expand the test in Cincinnati at this time. Simi told me outright that 

the test had been successful, but that "Coca Cola is very sensitive to 

I capital Cincinnati expense and simi at this is hopeful time". They that will the data continuegatheredto operate will convince the machines them toin 

move un at some point. 

had heard the rumors of it as well. He asked me to try to find out what it 

I; Simi 

was 

also said 

and who was 

he was 

running 

not 

it 

involved 

so he 

in 

could 

any 

get 

project 

involved! 

in Florida, but 

He recommended 

that 

we 

he 

start 

with the Florida CCE. Linda is already working on this. 

I heard I doubt directly that Cokefrom willCoke moveaboutforward a capital this year. expense Thissqueeze, is the butfirstthe time writingI 

have 

has been on the wall since November. There was a project to replace many of 

our applicators in the fountain plants, that was pretty high profile. It 

are talking about an extended maintenance program for the machines. 

I disappeared off the radar in November and has not resurfaced, and now they 

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Document 58 

#:1128 



WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 


E-Mail: ayowell@ watsonrounds.com 






Telephone: (310)451-0647 

Facsimile: (310) 394-4477 

E-Mail: dan @clslo.com 


Filed 09/28/11 



V. 

PlaintifffCounterdefendant, 


Nanoptix' 

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-A0296- 

-'1- 

Pagelof21 PagelD 


EXCEPTS OF DEPOSITION OF 

MARK MEYERHOFER IN 

SUPPORT OF NANOPTIX'S 

MOTION FOR SUMMARY 

JUDGMENT OF INVALIDITY OF 

THE '855 PATENT 




Pre-Tnal Conference! 12/16/11 

Trial Date: 1/10/12

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#:1129 

Meyerhofer Depo. Vol. I at 16:13-17:13: 

DEPOSITION EXCERPTS 

Q. BY MR. ROUNDS: Okay. Let nae show you what I've marked as Exhibit I to 

your deposition, Mr. Meyerhofer. And specifically if I could direct your attention to 

page 2. Do you see the caption "30(b)(6) Deposition Topics"? 

A. Yes. 

Q. Could you read topic number I just to yourself. 

A. Okay. Okay. 

Q. Is it your understanding that you've been designated by FutureLogic to testify on 

this topic? 

A. Yes. 

Q. Okay. 

MR. WILLIAMSON: Michael, just state for the record that his agreements are all 

subject to the 3 objections that were submitted to the deposition notice. 

MR. ROUNDS: Understood. 

Q. And could you read topic number 2 to yourself, please. 

A. Okay. 

Q. It's my understanding that you've been designated by FutureLogic to testify as to 

the conception of the claimed inventions of the '855 patent. Is that your 

understanding as well? 

A. Yes. 

Meyerhofer Depo. Vol. I at 17:16-25: 

Q. BY MR. ROUNDS: Let me show you what I've marked as Exhibit 2. 

A. Okay. 

Q. Exhibit 2 is US Patent No. 7,594,855. Do you see that? 

A. Yes, I do. 

Nanoptix' 

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Document 58 Filed 09/28/11 Page 3 of 21 Page ID 

#:1130 

Q. Is this the patent that you're the named inventor on that is being asserted against 

Nanoptix in this case? 

A. I believe so. 

Meyerhofer Dept. Vol. I at 19:20-20:8: 

Q. Let me direct your attention if I could to Bates number 4655. 

MR. WILLIAMSON: They are at the top. 

THE WITNESS: 4655. Okay. 

Q. BY MR. ROUNDS: To 4660. And specifically let me direct your 

attention to Bates numbers 4658 to 4660. 

A. Okay. 

Q. Is this the third declaration that you were referring to in your testimony? 

A. Yes. 

Q. Is that your signature on Bates number 4660 dated June 1st, 2009? 

A. Yes, it is. 


Q. Okay. Is there any particular portion of Claim 1 that differentiates it from things 

that you had done previously with printers at FutureLogic? 

MR. WILLIAMSON: Object to the form as calling for a legal conclusion. 

THE WITNESS: The only thing I could -- I could say with regard to that is that this 

would be a dual port claim, and that would be potentially different than printers that 

had been -- that we were aware of that operated in the specific way. 

Meyerhofer Dept. Vol. I at 35:16-20: 

Q. BY MR. ROUNDS: Okay. Is Bates numbers 4924 through 4930 a February 11, 

2008, declaration that you signed to submit to the Patent Office during the 

application process? 

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#:1131 

A. Yes, [ believe so. 


What I've marked as Exhibit 106 and which I'll have you refer to while I'm asking 

you questions about your declaration are color photographs of the exhibits that you 

attached to your declaration which have been produced to us in this case. 

A. Okay. 

Q. They're much more legible than the copy that we received from the Patent Office 

as you might imagine. 

A. Sure. 

Meyerhofer Depo. Voh I at 36:21-39:21: 

Q. Let me direct your attention to paragraph 6 and ask you to read that paragraph to 

yourself. 

A. Okay. 

Q. We've seen reference in other documents to a product designated PSA-66-VM. 

Are you familiar - 

A. Yes. 

Q. -- with that product designation? 

A. Yes. 

Q. Is that the product designation that was used for the prototypes that were 

provided to Coca-Cola? 

A. Yes. 

Q. Okay. Is it -- strike that. Is the PSA-66-VM the promotional printer that you're 

referring to in paragraph 6? 

A. Yes, it is. 

Q. Okay. I'll be referring in your deposition to that product as a VM. Is that fair? 

A. That's fair. 

Nanoptix'. 

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#:1132 

Q. Do you recall how many VMs were provided to Coca-Cola? 

A. Not an exact number. There may be documents that talk about what was 

intended to be delivered. I don't know how many of those actually, eventually made 

it to them. I'm suspecting it was close to, you know, somewhere in the 20-ish range. 

Q. Okay. Do you recall at what locations those VMs were installed? 

A. Not specifically. They -- they had designated internal use and trial use, but we 

were not privy to exact locations of, let's say, trial use. 

Q. Okay. Can you describe for me what type of vending machine these VM printers 

were installed in? 

A. T don't know in the trial site the exact nature of the machine, because there are 

many models of vending machines made by several companies for Coca-Cola. So I 

couldn't speculate on what the exact nature of that machine was other than it would 

have -- they would have all had a similar vending machine controller. 

Q. Okay. When you were working on the VM printer, did you design it to be 

installed in a specific type of vending machine? 

A. We were working towards that end, but it was apparently difficult to get all that 

information. 

Q. Okay. When the VM was installed at these different locations, do you have any 

recollection as to what type of vending machine they were installed in? 

A. No, that I don't have information on. 

Q. Can you describe for me the vending machine that you designed the VMs to be 

installed in? 

A. Generically, yes. It's been a while, so particulars -- I might not have all the 

particulars, but generically, yes. 

Q. Okay. Describe the generic version for me. 

A. Okay. They were the type of machine that had, you know, various products that 

Coke was offering at the time, soda pop mostly. And they accepted cash. They were 

to eventually accept credit card, and that would be the primary -- you know, they 

ENanoptix' _ -5xce_ts 

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Document 58 

#:1133 


had a bill acceptor effectively there to do at least the cash and the coins - acceptor 

to do the coins. And then they had their vending machinery inside the -- inside the 

machine to actually vend the product. They were refrigerated. That actually had a -- 

there was a reason for -- not only for that, but also it affected certain things, but 

refrigerated as well. And they had secure and unsecure sections. Well, everything 

was technically secure, but there were two -- two levels of security within the 

machines as far as access. 


Q. Let me direct your attention if I could to paragraph 10 of your declaration and 

ask you to read that to yourself. 

A. Okay. 

Q. Let me direct your attention if I could to Exhibit 106 and Bates number 7712. 

A. Okay. 

Q. And do you see therein the paper label that you're referring to in paragraph 10? 

A. Yes. 

Q. Can you tell from looking at Bates number 7712 what the model number is? 

A. Yes. 

Q. What's the model number? 

A. That is the PSA-66-VM. 

Q. Okay. With respect to the manufacturing date, can you tell that from the paper 

label? 

A. Yes. 

Q. And what is the manufacturing date? 

A. This one has been labeled as, let's see, 03 -- it's March 10th of 2000. 

Q. What does the encoded sequence number 5 represent? 

A. On the barcode or in the human readable section? Is that what you're referring 

to? 

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#:1134 

Q. Yes. 

A. Okay. 

Q. Let me ask it another way so we're clear. In paragraph 10 you refer to an 

encoded sequence number that's on the paper label. 

A. Yes. 

Q. What's the significance of the encoded 15 sequence number? 

A. It combines a number of things. A model number, an actual digit -- digit number 

for the model, in addition to effectively a manufacturing date and a serial number 

all combined together so it has three pieces to it. 

Q. Okay. 

MR. ROUNDS: Can you read that last answer back for me, please. I'm sorry. (The 

reporter read the record as follows: "Q. It combines a number of things. A model 

number, an actual digit -- digit number for the model, in addition to effectively a 

manufacturing date and a serial number all combined together so it has three pieces 

to it.") 

Q. BY MR. ROUNDS: What's the difference between the digit number and the 

serial number? 

A. What I was referring to was the first four digits are the actual model number. 

Q. And those would be 0312? 

A. Yes. And then the serial number would be the last four digits to give you -- on 

that particular manufacturing date up to 10,000 on that date that you could produce. 

Q. Okay. I see. So was 0015 representing that this was the 15th VM unit that had 

been made? 

A. It would be the 15th made on that production date. 


Q. Yes. Let me just give it to you again. Bates number 4767 to 4780 of Exhibit 103, 

the file history. Do you recognize this document as the second declaration that you 

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#:1135 

submitted to the Patent Office concerning the '855 patent application? 

A. I recognize it's one of the declarations. I wouldn't necessarily know whether it 

was first or second at this point, but it was definitely one of the declarations we 

submitted of the three. 

Q. I'll just represent to you that it is second in order. 

A. Okay. 


Q. When Mr. Hilbert refers to "swearing behind," do you understand him to mean 

establishing an earlier reduction-to-practice date? 

A. Based on this I don't know that I did at the time, but probably after consultation 

with counsel, patent counsel, that would have been clear that's -- would have been 

one of the methods, yeah. 

Q. As you sit here today, do you remember any meeting shortly after November 30, 

2007, with Mr. Cire? 

A. Well, I remember meeting with Mr. Cire, but I don't -- honestly I don't 

remember whether it was referencing this date, pre or post. I'm assuming that there 

might be something that would link the two, but right now I don't -- I don't 

specifically recall this on that date. (Exhibit I l I was marked.) 

Q. BY MR. ROUNDS: Let me show you what's been marked as Exhibit 111. And 

I'd like to direct your attention to the second page and specifically a January 21, 

2009, e-mail from Mr. Hilbert to yourself and Mr. Meyerhofer. Do you see that? 

A. Yes. 

Q. Do you see in the second paragraph that Mr. Hilbert refers to the CokeNDA? 

A. Yes. 

Q. In this time frame, January of 2009, do you have any recollection of looking at 

the Coke NDA either by yourself or with Mr. Hilbert? 

A. No. Because I'm -- I'm not sure if they were able to locate it independently of 

Nanoptix' -8- 

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2:10-cv-07678-JFW-DTB Document 58 Filed 09/28111 Page 9 of 21 Page ID 

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me. At that time, it wasn't my responsibility to hold those NDAs. They were kind of 

turned over to our document control system prior to that, I suspect, because we 

upgraded that probably in the mid -- or early to mid 2000s, but that would have 

been the general repository site. I really don't know -- remember searching for it or 

seeing it. 


BY MR. ROUNDS: Let me show you what I've marked as Exhibit 113, which is a 

March 7, 1996, letter from yourself to Mr. Uland. Do you have that in front of you? 

A. Yes. 


Q. BY MR. ROUNDS: Are you ready to proceed, Mr. Meyerhofer? 

A. Yes. Thank you for giving me the opportunity to talk to counsel. I-- what I 

wanted to state about this document I discovered this as part of my examination of 

the record going back. This date is -- there is a typo, and the typo is in the year. It's 

actually '97 from what I could tell by reconstructing the timeline and 

correspondence with Dave Uland and the like. And I couldn't -- I was trying to 

resolve it because it was such -- it was earlier -- specifically earlier than the bulk of 

all the other documents, and yet from all the notebook communications I have, it 

was in -- it was in this time frame, exactly in '97, and not '96, so that's why I wanted 

to bring that up. I believe that's a typo. 

Q. Okay. Well, thank you for that clarification. 

A. Okay. 

Q. To summarize then, you believe that the proper date for Exhibit 113 is March 

7th of 1997 as opposed to March 7th of 1996; is that fair? 

A. That's correct. 

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Meverhofer Depo. Vol. I at 107:19-108:1: 

Q. Okay. Did Interleave Systems eventually drop out of the picture with respect to 

the work that FutureLogic was doing for the Coke project? 

A. Yes. In a gradual way. Originally they were going to sell it and then eventually it 

went to a representative agreement where they would get a commission and then 

eventually I think they just bowed out. 

Meyerhofer Depo, Vol. I at 109:17-110:16: 

Q. BY MR. ROUNDS: Let me show you what's been marked as Exhibit 114, which 

is a document entitled "Kiosk Thermal Printer Project, LB970041-01, Functional 

Product Specification." Do you have that exhibit in front of you? 

A. Yes, I do. 

Q. Have you seen this document before to your knowledge? 

A. I have. [ didn't really study it, but I have seen it. 

Q. To your knowledge, does this document reflect a functional specification for a 

product being developed for the Coke project? 

A. 1 think it attempted to. They didn't really have -- they had some rudimentary 

knowledge through our previous work with Data South, at least Dave Uland did, 

about some types of things we could provide, and he did have some background in 

writing specifications I believe. So I think he tried to put together some starting 

specs to have discussions around, but this -- this was not really used in any 

meaningful way in the project because of that. There was a lot of the omissions and 

things that didn't advance as we may have made between the time that he dealt with 

us and where we were at that time. 


Q. BY MR. ROUNDS: Let me show you what I've marked as Exhibit 117, which is 

a letter from you to Mr. Davis. Do you see that? 

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2:10-cv-O7678-JFW-DTB Document 58 Filed 09/28/11 Page 11 of 21 Page ID 

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A. Ido. 

Q. Then let me direct your attention to Bates number 2969. 

A. Okay. 

Q. Do you see the reference to the date April 25, 1999? 

A. Yes. 

Q. Do you believe that you sent this letter on or about that date? 

A. I believe we did. I don't recall it specifically, but it's -- it's possible. 

Q. Let me direct your attention to the first paragraph of your letter and ask you to 

read it to yourself. 

A. Okay. 

Q. You indicate in the second sentence of the first paragraph that, "As you are 

aware, it has been approximately one year since FutureLogic developed the first 

generation prototypes which are currently being used to demonstrate concept." Do 

you see that? 

A. Yes. 

Q. How many prototypes were developed? 

A. For what they are referring to on the -- 

Q. Yeah. Let me ask a clean question for you. With respect to the first generation 

prototypes that are being referred to in the second sentence of your letter, in Exhibit 

117, how many of those were developed? 

A. I believe there were two that they received, and we had a couple of units, I 

suspect, for development and debug -- or debugging f'mnware. 


Q. BY MR. ROUNDS: Let me show you what's been marked as Exhibit I 18 which 

is a July 16, 1999, letter from Simmy Ahluwalla -- 

A. Ahluwalla. 

Q. -- to yourself. Do you see that? 

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Q. Can you read that paragraph to yourself. 

A. Okay. 


#:1139 

Q. Do you see the reference to completing "items 1 and 2 for the custom Coca-Cola 

coupon printer (per the letter addressed to James Davis dated 4/25/99)"? 

A. Yes. 

Q. Okay. Do you understand that that reference is to items 1 and 2 which are shown 

on Bates number 20970 of Exhibit 117? 

A. Yes. 

Q. Did FutureLogic ever complete items 1 and 2 pursuant to this request? 

A. We completed something that was - probably would have been a hybrid of that, 

again, because of the changes that would have occurred along the way in the project 

that we were working on. 

Q. Okay. When you're referring to "the hybrid," would that be the VM embodiment 

that we've discussed? 

A. Eventually it became the VM, but it morphed along the way quite a bit. 

Meverhofer Depo. Vol. I at 127:9-22: 

Q. BY MR. ROUNDS: Let me show you what I've marked as Exhibit 119. This is a 

letter from you to Simmy. Do you recognize this letter? 

A. I-- I have seen it, yes. 

Q. Can you direct your attention to the third page, Bates number 23294, Do see the 

reference to the date October 18, 1999? 

A. Uh-huh. 

Q. You have to speak audibly. 

A. I'm sorry. Yes, I do. 

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Q. Do you believe that you sent this letter to Simmy at Coca-Cola on or about 

October 18th of 1999? 

A. Yes. Probably that seems like a reasonable -- reasonable time. 

Meyerhofer Depo, Vol, I at 132:20-133:18: 

Q. Okay. Let me direct your attention back to Exhibit 119. And do you recall that 

Exhibit 119 refen'ed to the PSA-66-CC product designation? 

A. Yes. 

Q. Okay. Given that you were refen'ing to it as the PSA-66-VM on August 30th of 

1999, is the reference to PSA-66-CC the same thing? 

A. It -- from what I can tell, it probably -- the CC was probably internal. Might 

have been an internal handle, Coca-Cola, you know, CC, so as I look back at this, 

it's very likely that this (indicating) was produced by -- the document maybe by 

somebody else and I just signed it because then they would have not caught the 

differentiation between the dash CC and the VM. That may be why. Because I think 

once we got close to when they finally issued a P.O., which was still another month 

after this, at the time I believe we were locked down to a name of a VM. 

Q. Okay. So the PSA-66-CC is referring to the VM unit, but somebody internally 

referred it to as PSA-66-CC; is that fair? 

A, I think that's what it is, yes. 

Meyerhofer Depo, Vol, I at 133:24-134:22: 

Q. BY MR. ROUNDS: Let me show you what I've marked as Exhibits 121,122, 

and 123 which are three letters from you dated May 3, 1999, May 18, 1999, and 

June 15, 1999. 

A. Yes. 

Q. Is that correct? 

A. Yes. 

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Q. Are each of those exhibits referring to the April 25, 1999, letter and attachments 

set forth in Exhibit 117? 

MR. WILLIAMSON: Sorry, did we already establish that the witness prepared 

these? 

MR. ROUNDS: We did. 

MR. WILLIAMSON: Okay. 

THE WITNESS: It looks like they are additional -- as a result of additional 

questions or requests for cost reduction, budgetary cost reduction from what I can 

see. 

Q. BY MR. ROUNDS: Okay. And they're each referring back to the proposal you 

had made that's reflected in Exhibit 117; is that fair? 

A. Yeah. It looks like the -- let's see. These were in the 425. It would appear so 

from the -- the chronology that that would be accurate. 


Q. BY MR. ROUNDS: Let me show you what I've marked &s Exhibit 127, which is 

an April 4, 2000, e-mail from Mr. Shimmin to swood@coke. Do you see 

22 that? 

A. Yes. 

Q. What was Mr. Shimmin's position in April of 2000 at FutureLogic? 

A. I know he was assisting on the project, the Coke project. I don't know his exact 

title. I don't remember his exact title however, 

Q. Is he still at the company? 

A. No, no. He left some time ago. 

Q. Okay. Okay. In the second sentence of Mr. Shimmin's e-mail, he indicates that 

"The P.O. should be for 24 PSA-66-VM Beta Printers at $850 a printer." Do you 

see that? 

A. Yes. 

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Q. Could you grab Exhibit 119 again? 

A. Yes. 

Q. Directing your attention to Bates number 23294 -- 



Q. -- the P.O. that Mr. Shimmin is referring to is for the 850 that was quoted on 

October 18, 1999; is that fair? 

MR. W1LLIAMSON: Objection. No foundation. 

THE WITNESS: Before I answer that, I need to ask him a question with regard to 

this to -- I have something that I need to ask you about that. 

MR. WILLIAMSON: Okay. 

THE WITNESS: Is that okay if I do -- 

MR. WILLIAMSON: If you have an answer to the question, fine, but if you don't -- 

you can't answer the question without clarification, you should probably try to ask 

Mike first. 

THE WITNESS: Okay. Well, CCE is -- is effectively their -- their different entities. 

What happened -- what it looks like they did is they -- they contracted us to do the 

development under the Coca-Cola USA. CCE is a different entity than Coca-Cola, 

but they took it out -- probably out of their budget. They -- it,s a different entity, so 

they had directed them to -- that's why you see such a late date where there is -- a 

P.O. would already have been established some time ago. And what they ended up 

doing is saying okay, well, this is actually the field trial and that falls under this 

group. 

Q. BY MR. ROUNDS: Okay. I understand. To your knowledge, did a purchase 

order issue from CCE? 

A. I don't know, but units were shipped. I just don't know if they got shipped to 

Coca-Cola or whether they got -- whether they got shipped to here directly, and I 

don't know the answer to that, so... 

Q. But in any event, do you believe that a purchase order was issued from either 

Nanoptix' -I 5- 

Excerpts of 

Deposition 

-A0310-

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#:1143 

CCE or Coca-Cola USA? 

A. [ believe so, because I -- that would have been necessary to make sure they were 

shipping product against something, you know, you would get reimbursement for 

these hard costs. 

Q. To your knowledge, was that purchase order issued in response to the October 

18, 1999, document set forth in Bates number 23294? 

A. I'm SO1Xy; which document again? 

Q. Exhibit 119, page 23294. When you get there, I'll re-ask the question for you. 

A. There was a P.O. issued some time in the November time frame based upon 

notes that I can reference that looked like -- then we had a meeting -- or they were 

talking about schedules. I'm assuming at that point we had the P.O. 

Q. Okay. So you think that there was a P.O. in November of 1999 from either CCE 

or Coca-Cola CCUSA in response to the quote on Bates number 23294? 

A. I think so. I don't actually have that P.O. in my possession, but I'm kind of 

reconstructing notes and -- at least that's what it would appear. 

Q. With respect to the P.O. that's being referred to on Exhibit 127, what P.O. is that 

referring to as opposed to the November one that you just mentioned? 

A. I think from what I recall they took -- Coca-Cola USA basically took and issued 

a P.O. to cover, you know, whatever was mentioned about prototyping costs and 

then certain fees and the like and issued that and then later in the program decided 

that they wanted this other group since they were -- they wanted to -- maybe they 

were splitting costs. I don't know what they were doing. But basically they had 

them issue a P.O. to cover the actual delivered prototypes. 

Q. I understand. So the November P.O. more than likely was for the 23,500 and 

then the April P.O. was for the 850 each for the -- 

A. Well, actually I think they would have had both. Coca-Cola would have then had 

to specify they are paying the fees and we would have hard costs for the raw 

materials which would have then been broken out into that piece cost, is how they 

Nanoptix' -16- 

Excerpts of 

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-A0311- 

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wanted it divided out, so... 


MR. ROUNDS: Could you read that answer back, please. (The reporter read the 

record as follows: "A. Well, actually I think they would have had both. Coca-Cola 

would have then had to specify they are paying the fees and we would have hard 

costs for the raw materials which would have then been broken out into that piece 

cost, is how they wanted it divided out, so...") 

Q. BY MR. ROUNDS: Can you describe for me to the best of-- 

A. Sorry. 

Q. -- the best you can who issued the November P.O. and what it would have 

included? 

A. Okay. Since I don't have the P.O., I'm going to -- based upon what I can surmise, 

it would have fees and the costs for the -- included as another line item for the Beta 

units. 

Q. Okay. So it would have included the fees of 23,500 plus some additional costs; 

is that fair? 

A. That's what I'm probably believing from what I can gather. 

Q. And then the second P.O. that's being refen'ed to in April of 2000 would have 

been for the 24 units at a price of $850 each. 

A. They would effectively have asked us not to bill them on their first P.O., the 

Coca-Cola USA side, and instead bill CCE, Coca-Cola Enterprises basically, since 

they were doing the - conducting the field trial under Coke. (Exhibit 128 was 

marked.) 

Q. BY MR. ROUNDS: Let me show you what live marked as Exhibit 128, which is 

a FutureLogic Shipping Kit Checklist dated April 14th of 2000. Do you see that? 

A. Yes. 

Q. Does this document reflect the 24 VM units that were shipped to Coca-Cola? 

A. I'm assuming it does. It looks like it's -- it references that, and it has the 

quantities and some of the different pieces that were in the assembly, so it looks 

Nanoptix' - 17- 

Excerpts of 

Deposition 

-A0312-

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like that. 



#:1145 

Q. BY MR. ROUNDS: Exhibit 129 is a document reflecting a "Detailed Agenda 

For Coupon Printer Field Test." Do you see that? 


Q. This document relates to the VM printers that were installed at the various 

locations that Coke had requested they be installed at. Is that fair? 

A. Yeah. I'm not sure if this is the -- all locations or just maybe ones that they were 

going to that one week. I'm not sure. 

Q. All right. That's fair. The first page refers to at least the Duck Creek and the 

Wilmer locations. Do you see that? 

A. Yes. 

Q. Okay. Do you recalll as you sit here, that those were locations at which these 

VM printers were installed? 

A. Honestly [ don't even know where these locations were. We may have gotten -- 1 

don't know if this was given to us as a courtesy or what or just show that they were 

doing something with them, but I don't think we visited any of those or watched 

anything at those locations. 

Q. Is there anybody at FutureLogic currently who was involved with installing and 

monitoring these units? Let me restate the question, although that wasn't all that 

bad. Is there anybody still at FutureLogic that was directly involved in the 

installation of the VM 24 units? 

A. Are you referring to the -- for this trial? 

Q. Yes. 

A. I don't believe so. I don't think anybody went to be honest with you. I don't recall 

anybody going to any of their -- their sites for their field trial. 

Q. The reference to Scott, for example, on Wednesday, April 19th -- 

Nanoptix' - 18- 

Excerpts of 

Deposition 

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A. Uh-huh. 

Q. -- was that Mr. Shimmin, to your knowledge? 


#:1146 

A. That's Scott's -- Scott Shimmin's first name is Scott, but rm not sure if he went. I 

don't recall him going to a field trial, but I'm not even sure. Maybe it's the same 

Scott. I don't know, but I don't remember him going. I believe we trained them how 

to use the stuff, so I'm not sure if maybe they felt they had enough training and 

didn't need Scott maybe because I just don't -- as [ said I don't really remember any 

of us going to any field trial per se. 

Meyerhofer Depo. Vol. II at 174:12-20: 

Q. How many were returned? 

A. I'm thinking from what i've seen maybe two or three. 

Q. Did FutureLogic ask for those back, the two or three you just mentioned? 

A. I don't recall the -- some may have come back for repair and maybe we had 

substituted a replacement, but I'm not sure the rest -- any reasons why they might 

have come back other than that. 

Meyerhofer Depo. Vol. II at 184:9-185:23: 

Q. BY MR. ROUNDS: Let me show you what I've mm'ked as Exhibit 140, which is 

a "Supplier Self-Assessment" filled out by FutureLogic for IGT dated December 

11, 2000. Have you seen this document before? 

A. [ believe so. 

Q. Okay. On the first page it indicates that your title atthe time was 

president/quality assurance manager. 

A. Yeah. Well, yeah. They -- I was responsible for quality at that point, so... 

Q. Were you the president of the company at that point? 

A. Yes. 

Q. Okay. 

Nanoptix'. -19xce_ts 

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Deposition 

-A0314-

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#:1147 

A. We didn't have a whole lot of people at that time so we wore multiple hats. 

Q. What was the size of the company in this time frame? 

A. I'd have to estimate. It might have been -- 2000. It might have been 12 people, 

something like that. 

Q. Are you the president today? 

A. No. 

Q. What's your title today? 

A. I'm a co-chief technology officer today. 

Q, Okay. And when you say "co," does that mean that there is another chief 

technology officer as well? 

A. Yes. That would be Eric as well. 

Q. Who wears the title of president today? 

A. Right now Eric is both president and CEO. 

Q. Okay. When was the last time that you had the title of president? 

A. Let me think. I think it was in -- sometime in 2001, I think. We brought in 

somebody to -- to be 21 the president at the time, and then I think that proceeded a - 

- our transaction date in 2002, I believe. 




WATSON ROUNDS 


Reno, NV 895 l I 

Nanoptix' 

Excepts of 

Deposition 

-20- 

Attorneys for 

DefendantCounterclaimant 

Nanoptix, Inc. 

-A0315- I 

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#:1148 



Rounds, and that on this date, a copy of the foregoing EXCEPTS OF 

DEPOSITION OF MARK MEYERHOFER IN SUPPORT OF NANOPTIX'S 

MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF TIlE '855 

PATENT has been served upon the following counsel of record registered in this 

matter via the District of California's ECF Procedure. 

Dated September 28, 2011 By: Is/Robert Hunter 


Nanoptix' 

Excerpts of 

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-A0316- 

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Case 2: 

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WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 

E-Mail: mrounds(_,watsonrounds.com 

E-Mail: ayowell@watsonrounds.com 


Mark D. Nielsen _(#210023) 


1333 2n_ Street, Suite 500 


Telephone: (310)451-0647 

Facsimile: (310) 394-4477 

E-Mail: dan_clslo.com 

E-Mail: marE@cislo.com 



V, 

Plaintiff/Counterde fendant, 



Declaration of 





-A0317- 

-1- 


DECLARATION OF SIMMY 

AHLUWALIA 




Pre-Tnal Conference: t2/16/11 

Trial Date: 1/10/12

Case 2:" O-cv-07678-JFW-DTB Document 59 Filed 09/28/11 Page 2 of 4 Page ID #:1150 

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I, Simmy Ahluwalia, do hereby declare and state: 

1. I reside in Alpharetta, Georgia. I was previously employed by The 

Coca-Cola Company as a Commercialization Engineer from 1998 to 2001. I was 

specifically involved at Coca-Cola in the purchase and field test of the FutureLogic, 

Inc. printers that were placed at locations throughout Cincinnati, Ohio. 

2. I have reviewed the document with the designation FUT00037116. 

This is a true and correct copy of a July 16, 1999 letter that I sent to Mark 

Meyerhofer at FutureLogic, Inc. that bears my signature. 

3. I have reviewed the document with the designation FL00021204-5. 

This is a true and correct copy of an agenda for Coca-Cola Enterprises to install the 

FutureLogic, Inc. printers for field test at locations throughout Cincinnati, Ohio. 

4. I have reviewed the document with the designation FL0023327-28. 

That is a true and correct copy of an email from Mr. Burns at Coca- Cola 

Enterprises that I forwarded to FutureLogic, Inc. 

5. I have reviewed the document with the designation F0020624. That is 

a true and correct copy of any email that I sent to Scott Shimmin at FutureLogic, 

Inc. 

. 

It was common and a business practice for the employees working on 

the Coca-Cola project to send documents such as letters, emails or an agenda item 

to each other and to FutureLogic, Inc. concerning the printers and the field test. 

The documents referred to herein were all records that Coca-Cola and I would keep 



-A0318- 

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2°11n_a_'r-2:10-cv-O1;_'78_iJ'F-W -ER_Z°9_6_r_6_371 Filed 09/2811 t Page 3 of 4 Page ID #:1 {_"] 

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for a reasonable time flame as part of our ordinary business practices. 

I declare under penalty of perjury that the foregoing is true and cmTect to the 

best of my knowledge. 

DATED: September_Jo, 2011 


-A0319- 

Simmy Ahluwalia

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Rounds, and that on this date, a copy of the foregoing DECLARATION OF 

SIMMY AHLUWALIA has been served upon the following counsel of record 

registered in this matter via the District of California's ECF Procedure. 





-A0320- 

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Document 64 



WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 


E-Mail: ayowell@ watsonrounds,com 




1333 2"a Street, Suite 500 


Telephone: (310)451-0647 

Facsimile: (31.0) 394-4477 






V. 

Plaintiff/Cou nterdefendant, 






Nanoptix, Inc. s Motion For Leave Tu File Amended Answer 

with lnL_luitahle Conduct Counterclaim and Defense 

-A0321 - 

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Page ID #:1212 


NANOPTIX, INC.'S NOTICE OF 

MOTION AND MOTION FOR 

LEAVE TO FILE AMENDED 

ANSWER WITH INEQUITABLE 

CONDUCT COUNTERCLAIM 

AND DEFENSE 


Hearing Time: l:30 P.M. 

Pretrial Conference: 12/16/201 l 

Trial Date: 1/10/2012


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Document64 Filed10/07/11 Page2of9 Page lD #:1213 

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 

PLEASE TAKE NOTICE THAT at 1:30 p.m. on November 7, 2011 or as 

soon thereafter as counsel may be heard, in the courtroom of the Honorable John F. 

Walter, located at 312 North Spring Street, Courtroom 16, Los Angeles, CA 90012, 

Defendant NANOPTIX, INC. ("Nanoptix") will and hereby does move for an order 

permitting the filing of a Motion for Leave to File Amended Answer with 

Inequitable Conduct Counterclaim and Defense against Plaintiff FUTRELOGIC, 

INC,, ("FutureLogic"), in the above-titled action. This Motion is made following 

the conference of counsel pursuant to L.R. 7-3 which took place on September 27, 

2011. 

Nanoptix, by and through its counsel, submits the following Motion for 

Leave to File Amended Answer with Inequitable Conduct Counterclaim and 

Defense, and in support thereof, states as follows: 

I. FACTUAL BACKGROUND 

On December 27, 2010, Nanoptix filed its Answer and Counterclaims (Doe. 

# 14) in this action. The Counterclaims alleged noninfringement by Nanoptix of 

United States Patent No. 7,594,855 ("'855 Patent"), and that the '855 Patent is 

invalid, ld., q[_l28-33. 

On May 5, 2011, this Court issued the Case Management and Scheduling 

Order (Doe. #38), setting the deadline to move to amend pleadings by May 25, 

2011 in order for any amendments to be filed July 5, 2011. There is good cause for 

Nanoptix, lne.'s Motion For Leave To File Amended Answer 

with Inequitable Conduct Counterclaim and Defen_ 

-A0322- 

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Nanoptix seeking to amend these dates and amend its Answer and Counterclaims, 

as set forth below. 

The relevant facts supporting Nanoptix's proposed amended pleading are set 

forth in detail in Nanoptix's Statement of Uncontroverted Facts in support of its 

Motion for Summary Judgment of Invalidity Regarding the '855 Patent, and 

Nanoptix's proposed amended pleading. (Doc.# 56, III[ 9-47 ); Yowell Decl., 

Exhibit A, I[!1[29-55. In summary, Nanoptix alleges that FutureLogic, the inventor 

Mark Meyerhofer and the patent attorney representing FutureLogic made false 

representations to the United States Patent and Trademark Office ("PTO") 

concerning the offer for sale, sale and public use of printers that are covered by the 

'855 Patent. Id. As Nanoptix's Motion for Summary Judgment makes clear, there 

can be no dispute that the claimed invention is invalid under the on sale and public 

use bars of 35 U.S.C. § 102(b), and it is likewise clear that the critical material 

evidence supporting the '855 Patent's invalidity was withheld and misrepresented 

to the PTO. ld. 

On July 27 and 28, 2011, Nanoptix conducted the deposition of the inventor 

Mark Meyerhofer and the facts concerning the inequitable conduct at issue 

surfaced. Yowell Decl., q[ 6. Following the Meyerhofer deposition, on August 4, 

2001, FutureLogic produced additional emails and letters containing more detailed 

information regarding at least the critical non-disclosure agreements with Coca- 

Cola. ld. 112. Finally, on August 25,2011 FutureLogic served its Third 

Nanoptix, Inc.'s Motion For Leave To File Amended Answer 


-A0323- 

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Document 64 

Filed10/07/11 Page4of9 Page lD #:1215 

Supplemental Responses to Nanoptix's first set of Interrogatories. Id. Y[8. The 

Responses identified additional documents, including the Coca-Cola non-disclosure 

Agreements and other information that FutureLogic apparently deemed relevant to 

the on sale and public use bar issues, ld. 

Both parties have exchanged hundreds of thousands of documents in 

connection with the initial Complaint, Answer and Counterclaim, and fact and 

expert depositions have been taken. Discovery cut-off is set for October 24, 2011 

(Doe. # 26, last page). Due to the extensive amount of discovery that has already 

occurred in connection with the proposed Amended Counterclaim and Defenses, 

there is no need to extend the discovery deadline date or for either party to request 

additional discovery. 

A. Leave to Amend 

I. ARGUMENT 

Fed. R. Civ. P. 16(b)(4) provides that a scheduling order "may be modified 

only for good cause and with the judge's consent." tn this action, "good cause" 

exists to allow the scheduling order to be amended. The "good cause" standard set 

by Fed. R. Civ. P. 16(b)(4) primarily considers the diligence of the pm'ty seeking 

the amendment, and the District Court may allow a post-deadline amendment if the 

deadline could not reasonably have been met despite the diligence of the moving 

party. 

1992). 

See Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 


with Incquitable Conduct Counterclaim and Defen_ 

-A0324- 

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Nanoptix has been diligent in seeking ,and complying with all discovery 

requirements. Despite its efforts, Nanoptix did not begin to put the pieces together 

for its inequitable conduct defense and counterclaim until July 27,2011, twenty- 

five (25) days after the due date imposed by the Case Management and Scheduling 

Order. It was during the inventor Mark Meyerhofer's deposition that Nanoptix 

learned and confirmed that, in spite of Mr. Meyerhofer's declarations to the 

USPTO, the printers covered by the '855 Patent were offered for sale and sold to 

Coca-Cola and placed in public use by Coca-Cola in Cincinnati, Ohio at numerous 

locations. 

Once Nanoptix learned of the potential inequitable conduct defense and 

counterclaim at Mr. Meyerhofer's deposition, still more relevant discovery was 

produced by FutureLogic. FutureLogic provided an additional production of 

documents on August 4, 20111 and supplemental interrogatory responses on August 

25, 2011, respectively. Tbe two non-disclosure agreements with Coca-Cola, in 

particular, were important evidence that was included in Nanoptix's Motion for 

Summary Judgment. (Docket #56, q[27) 

If granted, amending the Scheduling Order to allow the amended pleading 

would not unfairly prejudice either party, or impose a significant burden on the 

court. As stated above, the amended pleading will not require an extension of the 

discovery cut-off date because the fact and the evidence of the inequitable conduct 

Nanoptix, lnc.'s Motion For Leave To File Amended Answer 

with Inequitable Conduct Counterclaim and Defense 

-A0325- 

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are based upon the recently-discovered public use and on sale evidence that has 

been in FutureLogic's possession for many years. 

There has been no undue delay on the part of Nanoptix in seeking to amend 

the Case Management and Scheduling Order and in conjunction, its Amended 

Answer and Counterclaim's. Nanoptix has complied with the current Case 

Management and Scheduling Order, and filed its Motion soon after the relevant 

discovery was uncovered and the mediation completed on September 13,2011. 

B. Leave to Amend Answer with Inequitable Conduct Counterclaim 

and Defense 

Nanoptix also requests leave to file its Amended Answer in light of the 

evidence outlined above and the policy of freely granting leave to amend a 

complaint when justice so requires. Fed. R. Civ. P. 15(a). As such, Nanoptix 

respectfully requests leave to file its amended pleading. 

The Ninth Circuit has been mindful of the long-standing notion that district 

courts should freely give leave to amend the pleadings when justice so requires, and 

that the standards for granting leave to amend are generous. See Balistreri v. 

Pacifica Police Dep't, 901 F.2d 696, 701 (9th Cir, 1990). In United States v. Webb, 

the court explained the factors that go into deciding whether to allow an 

amendment: 

In Howey v. Un!ted States, this Court analyzed these factors, and 

concluded that they are not of equal weigtit ..... . Only where 

prejudice is shown or the movant acts inbad faim are courts 

protecting the judicia,! system or other litigants when they deny leave 

to amencFa pleading. United States v. Webb, 655 F.2d 977,980 (9th 

Nanoptix, Ine.'s Motion For Leave To File Amended Answer 

with Inequitable Conduct Counterclaim and Defense 

-A0326- 

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Case 2 10-cv-07678-JFW-DTB Document 64 Filed 10/07/11 Page 7 of 9 Page ID #:1218 

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Cir. 1981), quoting Howey, 481F.2d 1187, 1190 (9 th Cir, 1973). 

Therefore, leave to amend should be freely given unless the opposing party 

makes a showing of undue prejudice, or bad faith or dilatory motive. See Ross v. 

Pioneer Life Ins. Co,, 545 F. Supp. 2d 1061, 1064-65 (C.D. Cal, 2008). Ultimately, 

this court "must be guided by the underlying purpose of Rule 15 to facilitate 

decision on the merits, rather than on the pleadings or technicalities." Webb, 655 

F.2d at 981. 

As noted above, there has been no undue delay, bad faith or dilatory motive 

by Nanoptix and most importantly, no requisite prejudice to FutureLogic. 

FutureLogic knows full well of the requisite facts supporting these claims and was 

in lull possession of them at the time it filed this lawsuit. There is every reason to 

allow Nanoptix's proposed amended pleading and there is a strong public interest in 

purging the PTO of patents that were obtained through inequitable conduct. 

Precision Instrulnent Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 815-16 

(1945). The Motion for Leave should therefore be granted. 

/// 

/// 

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/// 

/// 

/// 

Nanoptix, Inc. s Motion For Leave To File Amended Answer 

with Inc_luitable Conduct Counterclaim and Defen_ 

-A0327- 

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Case 2 10-cv-O7678-JFW-DTB 

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Document64 Filed10/07/11 Page8of9 Page lD #:1219 

IlL CONCLUSION 

For the foregoing reasons, Defendant respectfully requests that its Motion for 


Defense be granted. 

Dated: October 7, 2011 By;/s/ Michael D. Rounds 



WATSON ROUNDS 





-A0328- 

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0-cv-O7678-JFW-DTB Document64 Filed10/07/11 Page9of9 Page lD #:1220 


Pursuant to Fed. R. Civ. E 5(b), I certify that [ am an employee of Watson 

Rounds, and that on this date, a copy of the foregoing NANOPTIX, INC.'S 

NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE AMENDED 

ANSWER WITH INEQUITABLE CONDUCT COUNTERCLAIM AND 

DEFENSE has been served upon the following counsel of record registered in this 

matter via the Court's ECF procedure. 

Dated October 7,2011 By: /s/Robert Hunter 

Nanoptix, Inc.'s Motion For Leave Tn File Amended Answer 

i • s b i 


-A0329- 

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An Employee of Watson Rounds

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#:1221 

DECLARATION OF ADAM YOWELL 

I, Adam Yowell, do hereby declare and state: 

1. I am an attorney licensed in the states of California and Nevada and 

before this Court, and represent Defendant Nanoptix, Inc. ("Nanoptix") in this 

matter. I make this declaration in support of Nanoptix's Motion for Leave to File 

Amended Answer with Inequitable Conduct Counterclaim and Defense. I have 

personal knowledge of the facts stated herein and if called to testify could and 

would competently testify thereto. 

2. Our law firm, Watson Rounds, filed its Substitution of Attorneys for 

Nanoptix on March 31,2011 (Doc. #28) and it was signed and approved by the 

Court on April 1,2011 (Doc. #29), Prior to filing the Substitution of Attorneys, 

we had reviewed the status of the case and were prepared to litigate it on 

Nanoptix's behalf. 

3. The parties finalized and submitted the protective order on April 11, 

2011 (Doc. # 32), and it was signed by the Court on April 18, 2011 (Doc. #36). 

4. I traveled to Dieppe, New Brunswick, Canada, Nanoptix's place of 

business, and met with representatives of Nanoptix on May 3, 2011. It is a 

relatively small company of thirty employees. I discussed FutureLogic's document 

requests with the company and requested certain responsive documents while I was 

there, and those initial documents were produced on May 12, 2011. 

-A0330-


#: 1222 

5. On May 5,201 l, the Case Management and Scheduling Order was 

entered (Doc. #38). Pursuant to the Order (Doc. #38, 7:17-22), a Motion for 

Leave to Amend Pleadings must had been filed by May 25,2011 in order to be 

heard by the Scheduling Order deadline. 

6. FutureLogic's Company Founder, Mark Meyerhofer, was deposed on 

July 27 and July 28, 2011. Those transcript excerpts are attached and referred to in 

the Motion for Summary Judgment Regarding Invalidity of the '855 Patent. (Doc. 

#58). 

7. On August 4, 2011, FutureLogic, in connection with the depositions 

of Mark and Eric Meyerhofer, produced documents bearing bates numbers 

FUT00078756-FUT00082978. These documents contained emails and letters 

detailing two (2) Agreements between Coca-Cola and FutureLogic, signed on 

March 20 and March 3 l, 1997, respectively. 

8. On August 25,2011, FutureLogic served its Third Supplemental 

Responses to Nanoptix's First Set of Interrogatories. The Responses identified 

additional emails, memorandums and letters detailing the Agreements between 

Coca-Cola and FutureLogic. 

9. On September 13, 2011, FutureLogic and Nanoptix met for the 

scheduled settlement conference. 

-A0331 - 

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#: 1223 

10. Attached as Exhibit A is a true and correct copy of the Proposed 

Amended Answer and Counterclaim Nanoptix is requesting to file if the 

concurrently filed Motion for Leave is granted. 

11. Attached as Exhibit B are true ,and correct citations to the pages, line 

numbers and wording of all proposed additions to Nanoptix's original Answer and 

Counterclaim, as required by the Amended Case Management and Scheduling 

Order. 

I declare under penalty of perjury under the laws of the United States that 

the foregoing is true and correct. 

Dated: October 7, 2011 Respectfully submitted, 

-A0332- 

BY: /S/ 

Adam K. Yowell 

Attorney/br Defendant and 

Counterclaimant 

NANOPTIX, INC.

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#: 1224 

Exhibit A 

-A0333- 

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:10-cv-07678-JFW-DTB Document 64-2 Filed 10/07/11 Page 2 of 15 Page ID 

#:1225 

Michael D. Rounds (SBN 133972) 

mrounds @ watsonrounds.com 

Adam K. Yowell (SBN 273661) 

_owell @ watsonrounds.com 

ATSON ROUNDS 


Reno, NV 895111-2083 

Telephone: (775) 324-4100 

Facsnnile: (775) 333-8171 

Daniel M. Cislo {SBN 125378) 

dan @ cislo.com 

Mark D. Nielsen (SBN 210023) 

mm'k@cislo.com 

CISLg.,_ ' THOMASLLP 



Telephone: (310)451-0647 

Facsimile: (310) 394-4477 

Attorneys fbr Defendant and Counterclaimant 



VS. 

Plaintiff, 

NANOPT1X, INC., 

Defendant. 


VS. 

Counterclaimant, 


Counter-Defendant. 




-A0334- 


NANOPTIX, INC.'S FIRST 

AMENDED ANSWER AND 

COUNTERCLAIMS 




Nanoptix, lnc.'s First Amended Answer and Counlerclaim 

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Defendant Nanoptix, Inc. ("Nanoptix") hereby submits its Answer, including 

affirmative defenses, and counterclaims as to the Complaint for Patent 

Infringement of Plaintiff FutureLogic, Inc. ("FutureLogic") as follows: 

THE PARTIES 

1. Nanoptix lacks kmowledge or information sufficient to form a belief 

regarding the truth of the allegations in paragraph 1 and therefore denies the 

allegations. 

2. Nanoptix admits that it is a Canadian corporation with its primary 

place of business at 699 Champlain St., Dieppe, New Brunswick, Canada. 


3. Nanoptix admits that FutureLogic purports to bring this action under 

the patent laws of the United States and that this Court has subject matter 

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). Nanoptix, however, 

denies the merits of the claims asserted against it. 


district. Nanoptix denies tile remaining allegations in paragraph 4. 



6. Nanoptix admits that venue is proper in this district, but denies having 

committed any wrongful acts upon which venue allegedly is based. 

PATENT-IN-SUIT 

7. Nanoptix admits that U.S. Patent No. 7,594,855 (the "'855 patent"), 

entitled "Method and Apparatus for Gaming Promotional Printer," was issued by 

the United States Patent and Trademark Office on September 29, 2009 with Mark 

Meyerhofer listed as the inventor. Nanoptix lacks the knowledge or information 

sufficient to form a belief regarding the truth of the remaining allegations in 

paragraph 7 and therefore denies the allegations. 

-A0335- 


Nanoptix. lnc.'s First Amended Answer and Counterclaims

Case 

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10-cv-07678-JFW-DTB Document 64-2 Filed 10/07/11 Page 4 of 15 Page ID 

#: 1227 

8. Nanoptix lacks knowledge or infonnation sufficient to form a belief 

regarding the truth of the allegations in paragraph 8 and therefore denies the 

allegations. 


INFRINGEMENT OF U.S. PATENT NO. 7_594,855 

10. Nanoptix restates and incorporates the replies set forth in paragraphs 1 

through 9 of this Answer. 

11, Nanoptix admits that it sells Paycheck products in this district and 

elsewhere in the United States. 





116. This paragraph of the Complaint states a legal conclusion that does 

not require a response. To the extent this paragraph requires a response, Nanoptix 

denies the allegations in paragraph 16. 


17. Nanoptix denies that Plaintiff is entitled to any relief whatsoever, 

including the relief requested by Plaintiff in its Complaint, and therefore denies all 

allegations and relief requested in Plaintiff's Prayer For Relief. 

NANOPTIX'S AFFIRMATIVE DEFENSES 


(Noninfringement) 

18. Nanoptix is not infringing and has not infringed, either directly, 

contributory, or by inducement, any claim of the '855 patent, either literally or 

under the doctrine of equivalents. 

-A0336- 


Nanoptix, Inc.'s First Amended Answer and Counlerclaim: 

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10-cv-07678.JFW-DTB Document 64-2 Filed 10/07/11 Page 5 of 15 Page ID 

#: 1228 


(Invalidity) 

19. On information and belief, all of the claims of the '855 patent are 

invalid for failure to comply with one or more of the requirement of 35 U.S.C. §§ 

101,102, 103, and 112. 

THIRD AFFIRMATIVE DEFENSE 

(Laches and Estoppel) 

20. On information and belief, Plaintiff is barred in whole or in part from 

asserting the '855 patent against Nanoptix by the equitable doctrine of laches, 

waiver, and estoppels. 

FOURTH AFFIRMATIVE DEFENSE 

Plaintiff's ability to recover from Nanoptix is limited by 35 U.S.C. §§ 


(Inequitable Conduct) 

22. The '855 patent is unenforceable due to the inequitable conduct set 

forth in Nanoptix's Third Counterclaim. 

SIXTH AFIRMATIVE DEFENSE 

23. Nanoptix reserves the right to amend its Answer to assert further 

affirmative defenses based on future discovery and further factual investigation in 

this suit. 

NANOPTIX'S COUNTERCLAIMS 

For its counterclaims against Plaintiff, Nanoptix alleges the following: 

-A0337- 


Nanoptix, Inc.'S First Amended Answer and Counterclaims

Case ", :10-cv-07678-JFW-DTB Document 64-2 

#: 1229 


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THE PARTIES 

24. Nanoptix is a Canadian corpormion with its primary place of business 

at 699 Champlain St., Dieppe, New Brunswick, EIA IP6 Canada, 

25. On information and belief, Plaintiff FutureLogic is a corporation 

organized and existing under the laws of the State of California, having its 

principal place of business at 425 E. Colorado Street, Suite 100, Glendale, 

California. 


26. This Conrt has subject matter jurisdiction over Nanoptix's 

counterclaims for noninfringement, invalidity and unenforceability pursuant to 28 

U.S.C. §§ 1331, 1338, and 2201. 

27. This Court has personal jurisdiction over these counterclaims both 

)ecause the plaintiff is organized and governed by the Laws of the State of 

2alifornia, and because of this already-pending action initiated by Plaintiff. 

28. Venue for these counterclaims is proper in this judicial district 

pursuant to 28 U.S.C. §§ 1391 and 1400(b), 

FACTUAL BACKGROUND 

29. On February 28, 2008, during the prosecution of the '855 patent, 

responding to a final office action from the United States Patent and Trademark 

Office ("PTO"), FutureLogic filed the Declaration of Mark Meyerhofer, the 

inventor and FutureLogic founder, to antedate the Rowe '320 patent and the Rowe 

'527 published application. Mr: Meyerhofer relied on the PSA-66-VM Printer 

("VM Printer"), built and operated by FutureLogic, as evidence that the claimed 

invention was reduced to practice before July 10, 2001, which is the earliest 

effective date of Rowe'320 and Rowe '527. In paragraphs 6 to16 of his 

declaration, Mr. Meyerhofer described the VM Printer, showing that it met the 

elements of the claimed invention. 

-A0338- 


Nanoptix, Inc.'s First Amended Answer and Counterclahn,, 

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#: 1230 

30. On May 13, 2008, the FFO again rejected all claims of the '855 Patent 

application, citing, among others, the Rowe '065 published application and the 

Nichols '2411 patent. 

31. On August 13, 2008, responding to the May 13, 2008 office action, 

FutureLogic submitted another declaration of Mr. Meyerhofer to antedate the 

Rowe '065 and Katz '901 published applications. The second Meyerhofer 

declaration is identical to the first declaration except that it states that the claimed 

invention was actually reduced to practice before December 19, 2000, which is the 

earliest effective date of Rowe '065 and Katz '901. In both declarations, Mr. 

Meyerhofer stated, "After being built, the promotional printer was placed into 

operation and used for its intended purpose." 

32. The '855 patent claims priority to U.S. Provisional Application No. 

60/369,097, which was filed on March 29, 2002. The critical date is therefore 

March 29, 2001. On sale or public use activities before that date invalidates the 

patent under 35. U,S.C. § 102(b). 

33. On December 3, 2008, the PTO issued a final office action, raising 

issues of whether the claimed invention described in Mr. Meyerhofer s 

declarations was either on sale or in public use under 35. U.S.C. § 102(b), stating: 

On the third page of the declaration, the inventor stated 

that "After being built, the promotional printer was 

placed into operation and used for its intended purpose.. 

" Based on the above statement, the Examiner would 

like to ask for more clarification as to the period in which 

the invention was in operation. When the invention was 

placed into operation, was the invention on display to 

anyone other than the inventor? Was the use of the 

invention strictly for testing purposes? Was the 

operation of the invention in a place where the public 

could view the structural features of the claimed 

invention while in operation? As discussed earlier in a 

conversation with Attorney of record Frank Cire, the 

Exanfiner understood that FutureLogic, lnc has created 

-A0339- 

- 6 - Case No, CV I0-7678-JFW-DTB 

Nan0ptix, lnc.'S First Amended Answer and Counterclaims

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10-cv-07678-JFW-DTB Document 64-2 Filed 10107/11 Page 8 of 15 Page ID 

#:1231 

products for use by other corporations. Has the claimed 

invention in question been used by another person or 

party other than the inventor to use the invention without 

limitation, restriction or obligation of secrecy to the 

inventor? Has the invention, during the operation period, 

been used by a third party in a manner that informs the 

public or a competitor of the invention? During the 

operation, was the invention sold, or offered to be sold, to 

any party by the inventor or tile assignee associated with 

the invention? A proper response to these questions 

would make it clear to the Examiner and place facts on 

record whether the invention was reduced to practice 

before the earliest reference with or without any "public 

use" or "on sale" activities. Refer to MPEP 2133.03 for 

the explanation of "On Sale" or "Public Use," In the case 

of the facts revealing that the invention was involved in 

"public use" or "on sale" activities, the 35 U.S.C. 102(b) 

rejections based upon a public use or sale of the 

invention will be maintained. If the facts reveal 

otherwise, the rejection will be withdrawn. 

34. On June 3, 2009, responding to the December 3, 2008 final office 

action, FutureLogic stated: 

Applicant submits herewith but under separate letter, a 

Supplemental Declaration under 37 C.F.R. § 1.131 in 

order to further clarify the circumstances under which the 

promotional printer described in Applicant's two 

previous Declarations under 37 C.F.R. 1.131 dated 

February I l, 2008 and August 12, 2008, was reduced to 

practice .... Furthermore, and in accordance with 

Applicant's understanding of the rejection under 35 

U.S.C. § 102(b), Applicant respectfully requests that the 

Examiner consider the additional information supplied in 

the Supplemental Declaration. Based on that additional 

information, Applicant submits that the present invention 

was neither made accessible to the public, nor used 

commercially, nor offered for sale or sold, before the 

critical date of March 29, 2001. Accordingly, Applicant 

respectfully requests consideration and withdrawal of the 


-A0340- 

- 7 - Case No. CV 10-7678-JFW-DTI3 

Nanoptix, Inc.'s First Amended Answer and Cotmterclaims 

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35. On June 26, 2009, FutureLogic filed Mr. Meyerhofer's third 

declaration, which was intended to accompany the June 3, 2009 response, 

indicating that the submission was "inadvertently delayed." FutureLogic further 

indicated, "The contents and sufficiency of the supplemental declaration were 

discussed with the Examiner in a telephonic interview prior to the submission of 

the previous response dated June 3, 2009." The third Meyerhofer declaration 

states: 

6. On or before December 19, 2000, 

FutureLogic entered into a codevelopment project with a 

soft drink manufacturer for a promotional couponing 

system for use with vending machines. FutureLogic and 

the soft drink manufacturer shared the costs of the project 

which resulted in payments to FutureLogic to cover a 

part of FutureLogic's costs. During the project and for a 

period of time afterward, both FutureLogic and the soft 

drink manufacturer were subject to a mutual non- 

disclosure agreement reg_d_ng the project. 

7. As p_t of Future Logic's contribution to the 

project, a number of prototype promotional printers 

having the features of the invention were constructed by 

FutureLogic for experimental use during the period of the 

project .... 

8. After being constructed, the prototype 

promotional printers were operated for a period of time 

by FutureLogic and the soft drink manufacturer as 

described in my previous declarations under 37 CFR § 

1.131 dated Febnlary 11, 2008 and August 112, 2008. 

The purpose of this operational period was to test the 

operation of the prototype promotional printers in 

vending machines. The test results were used to further 

refine the design of the prototype promotional printers. 

During this operational period, the prototype promotional 

printers were only accessible by the technical personnel 

of Future Logic and the soft drink manufacturer and were 

not accessible by the public. 

-A0341 - 

- 8 - Case No. CV 10-7678-JI_W-DTB 

Nanoplix. Inc.'s First Amended Answer and Counterclaim:

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9. At the end of the project, a decision was 

made not to commercialize the prototype promotional 

printer design and none of the prototype promotional 

printers were sold nor were they offered for sale. 

37. On June 25, 2009, the PTO issued a Notice of Allowance and 

withdrew its 35 U.S.C. § 102(b) rejection based upon FutureLogic's 


38. On March 20 and March 31, 1997, FutureLogic signed two Non- 

Disclosure agreements with Coca-Cola. Neither agreement imposed any 

confidentiality obligations upon Coca-Cola. After signing the agreements, 

FutureLogic developed a promotional printer for use in Coca-Cola's vending 

machines. 

39. FutureLogic avers in an interrogatory response that the invention of 

the '855 Patent was conceived by September 3, 1997, and was reduced to practice 

by January 21, 1998. 

40. On or about April 25, 1999, FutureLogic sent a letter to Coca-Cola 

that provided quotes to Coca-Cola for a "CCUSA" printer, describing it as a 

"highly customized printer." The letter states: "What is proposed is a true product 

price; [there] have been no omissions which can lead to product up charges after 

the award of the contract." 

41. The April 25 quote included prices for production units based upon 

quantity ($395 to $450) and prices for two phases of prototypes ($17,500 and 

$850, respectively). 

42. On July 16, 1999, Coca-Cola responded to FutureLogic's April 25 

Order and ordered twenty-four CCUSA printers from FutureLogic. 

43. On or about October 18, 1999, Futurelogic sent a letter and revised 

product quotation to Coca-Cola for the PSA-66-VM or VM printer. 

-A0342- 


Nanoptix, lnc.'s First Amended Answer and Cotmterclaims 

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44. The VM printer set forth in the October 18 letter with price quotations 

is the same Coca-Cola printer referred to by Mr. Meyerhofer in his first, second 

and third declarations to the PTO. 

45. The October 18 letter included higher prices for production unit 

quantity ($402.50 to $457.50) _md phase 1 prototypes ($23,500) compared to the 

April 25 letter, but the same price ($850) for phase two prototype units. The price 

changes reflected the additional features requested by Coca-Cola. 

46. In November 1999 and April 2000, Coca-Cola sent purchase orders to 

FutureLogic for 24 VM printers at $850 each. 

printers. 

47. 

By March 10, 2000, Futurelogic had produced at least fifteen VM 

48. After receipt of Coca-Cola's April 2000 purchase order, on or about 

April 14, 2000, Futurelogic shipped the 24 VM Printers to Coca-Cola. Invoices for 

these units were issued by FutureLogic on April 117, 18 and 20, 2000, respectively, 

to Coca-Cola. 

49. Futurelogic was not privy to the locations or the models of the 

vending machines in which Coca-Cola installed the printers for use in the field. 

50. Coca-Cola placed the 24 VM printers at locations throughout 

Cincinnati, Ohio and FutureLogic was not present when Coca-Cola installed the 

units in the field for use by customers of its vending machines. 

51. The VM printers were still in use as of February 15, 2001 and the 

field test was successful. 

52. Out of the 24 VM printers provided to Coca-Cola, Coca-Cola 

returned only two or three printers to Futurelogic for repair or replacement. 

53. During the prosecution of the '855 patent, FutureLogic, the inventor 

and his patent attorney intentionally failed to disclose to the PTO the April 25 and 

-A0343- 


Nanoptix. Inc.'s First Amended Answer and Counlerclaims

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October 18, 1999 offers for sale, the sale of 24 prototype units to Coca-Cola or the 

public use activity in Cincinnati, Ohio. 


and its patent attorney knowingly made false statements to the PTO concerning the 

existence of a mutual non-disclosure agreement, the sharing of costs, the operation 

of the prototype units sold to Coca-Cola and the experimental use of such 

prototypes by Coca-Cola. Pursuant to Fed. R. Civ. P. 8(d)(2), in the alternative, if 

the "claimed invention" described in Mr. Meyerhofer's declarations and in remarks 

to the PTO by its patent attorney, is represented or determined to not include all 

claims of the '855 patent, FutureLogic, the inventor and its patent attorney made 

knowingly false statements that all claims of the '855 patent were reduced to 

practice. 

55. But for the non-disclosures and knowingly false statements, the '855 

patent would not have issued. 



56. An actual case or controversy exists between Nanoptix and Plaintiff" 

concerning infi'ingement of U.S. Patent No. 7,594,855 (the '"855 patent"). 



58. Nanoptix is not infringing, and has not infringed, either by direct 

infringement, contributory infringement, or inducted infringement, any claims of 

the '855 patent. 

-A0344- 

- 1 ] - Case No. CV 10-7678-JFW-DTB 

Nanoptix, Inc.'s First Amended Answer and Counlerclaims 

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concerning invalidity of tile '855 patent. 

60. Nanoptix restates and incorporates the "allegations contained in 


61. All of the claims of the '855 patent are invalid under one or more 

sections of the Patent Act, including (but not limited to) 35 U.S.C. §§ 101, 102, 

! 03, or 112. 

THIRD COUNTERCLAIM 

(Declaratory Judgment of Inequitable Conduct and Unenforceability of the 

'855 Patent) 

62. Nanoptix incorporates by reference the allegations of paragraphs 24 

through 55 of this Counterclaim as if fully set forth herein. 


concerning unenforceability of the '855 patent. 

64. The '855 patent is unenforceable by FutureLogic because it obtained 

the patent through inequitable conduct committed on the PTO. FutureLogic, the 

inventor and its patent attorney substantively involved in the preparation or 

prosecution of the application the '855 patent, committed fraud on the PTO by 

deliberately submitting false declarations and misrepresenting and omitting 

material information of the offers for sale, sales and public use of the Claimed 

invention in the United States prior to March 29, 2001, with the specific intent to 

deceive the PTO. The PTO would not have allowed the '855 patent claims had it 

known of the offers for sale, sales and public use of the claimed invention. 

-A0345- 

- 12 - Case No. CV 10-7678-JFW-DT13 

Nanoptix, Inc.'s First Amended Answer and Counlerclaims

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10-cv-O7678-JFW-DTB Document 64-2 Filed 10/07/11 Page 14 of 15 Page ID 

#: 1237 

its favor that: 

NANOPTIX'S PRAYER FOR RELIEF 

Wherefore, Nanoptix respectfully requests that this Court enter judgment in 

(a) Nanoptix is not infringing and has not infringed any claim of the '855 

patent; 

(b) all claims of the '855 are invalid and/or unenforceable; 

(c) Plaintiff's claims are dismissed in their entirety with prejudice; 

(d) Plaintiff shall take nothing by way of its Complaint; 

(e) this is an exceptional case and awarding Nanoptix its reasonable 

attorney fees pursuant to 35 U.S.C. § 285 and any other applicable 

statutes, rules, or laws; 

(f) awarding Nanoptix its costs, and such additional relief as the Court 

may deem just and proper under the circumstances. 

Dated: October 7, 2011 Respectfully submitted, 

-A0346- 

BY: /S/ 


Attorneys for Defendant and 




Nanoptix, lnc.'s First Amended Answer and Counlerclaim: 

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10-cv-07678-JFW -DTB Document 64-2 Filed 10/07/11 Page 15 of 15 Page ID 

#:1238 

DEMAND FOR ,_JRY TRIAL 

Defendant and counterclaimant Nanoptix, Inc. hereby demands a trial by 

jury on all issues so triable. 

Dated: October 7, 201 1 Respectfully submitted, 

-A0347- 

BY: /S/ 


Attorneys for Defendant and 



- 14 - Case No, CV 10-7678-JFW-I)TB 

Nanoplix, Inc.'s First Amended Answer and Counterclailrts

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#: 1239 

Exhibit B 

-A0348-

Case 2:10-cv-O7678-JFW-DTB 

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Document 64-3 

#: 1240 



WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 


E-Mail: ayowell@ watsonrounds.com 



CISLO _ THOMAS LLP 



Telephone: (310)451-0647 

Facsimile: (310) 394-4477 

E-Mail: dan @ cl slo.com 


Filed 10/07/11 Page 2 of 10 



V. 



Proposed 

Additions to 

Answer 





-A0349- 

-1- 

Page ID 


PROPOSED ADDITIONS 

INCLUDED IN DEFENDANT'S 

FIRST AMENDED ANSWER AND 

COUNTERCLAIMS 


Hearing Date: I 1/7/11 


Pre-Tri-al Conference: 12/16/11 

Trial Date: 1/1.0/12 

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First Amended Answer and Counterclaims I at 4:15-19: 


(Inequitable Conduct) 

22. The '855 patent is unenforceable due to the inequitable conduct set 

forth in Nanoptix's Third Counterclaim. 

First Amended Answer and Counterclaims at 5:17-11:15: 

FACTUAL BACKGROUND 

29. On February 28, 2008, during the prosecution of the '855 patent, 

responding to a final office action from the United States Patent and Trademark 

Office ("PTO"), FutureLogic filed the Declaration of Mark Meyerhofer, the 

inventor and FutureLogic founder, to antedate the Rowe '320 patent and the Rowe 

'527 published application. Mr. Meyerhofer relied on the PSA-66-VM Printer 

("VM Printer"), built and operated by FutureLogic, as evidence that the claimed 

invention was reduced to practice before July 10, 2001, which is the earliest 

effective date of Rowe'320 and Rowe '527. In paragraphs 6 to16 of his 

declaration, Mr. Meyerhofer described the VM Printer, showing that it met the 

elements of the claimed invention, 

30. On May 13, 2008, the PTO again rejected all claims of the '855 Patent 

application, citing, among others, the Rowe '065 published application and the 

Nichols '241 patent. 

31. On August 13, 2008, responding to the May 13, 2008 office action, 

FutureLogic submitted another declaration of Mr. Meyerhofer to antedate the Rowe 

'065 and Katz '901 published applications. The second Meyerhofer declaration is 

i Included as Exhibit A to the instant motion 

Proposed -2- 

Additions to 

Answer 

-A0350-

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#: 1242 

identical to the first declaration except that it states that the claimed invention was 

actually reduced to practice before December 19, 2000, which is the earliest 

effective date of Rowe '065 and Katz '901. In both declarations, Mr. Meyerhofer 

stated, "After being built, the promotional printer was placed into operation and 

used for its intended purpose." 

32. The '855 patent claims priority to U.S. Provisional Application No. 

60/369,097, which was filed on March 29, 2002. The critical date is therefore 

March 29, 2001. On sale or public use activities before that date invalidates the 

patent under 35. U.S.C. § 102(b). 

33. On December 3, 2008, the FI'O issued a final office action, raising 

issues of whether the claimed invention described in Mr. Meyerhofer's declarations 

was either on sale or in public use under 35. U.S.C. § 102(b), stating: 

Proposed 

Additions to 

Answer 

On the third page of the declaration, the inventor stated 

that "After being built, the promotional printer was placed 

into operation and used for its intended purpose . . ." 

Based on the above statement, the Examiner would like to 

ask for more clarification as to the period in which the 

invention was in operation. When the invention was 

placed into operation, was the invention on display to 

anyone other than the inventor? Was the use of the 

invention strictly for testing purposes? Was the operation 

of the invention in a place where the public could view 

the structural features of the claimed invention while in 

operation? As discussed earlier in a conversation with 

Attorney of record Frank Cite, the Examiner understood 

that FutureLogic, Inc has created products for use by 

other corporations. Has the claimed invention in question 

been used by another person or party other than the 

inventor to use the invention without limitation, 

restriction or obligation of secrecy to the inventor? Has 

the invention, during the operation period, been used by a 

third party in a manner that informs the public or a 

competitor of the invention? During the operation, was 

the invention sold, or offered to be sold, to any party by 

the inventor or the assignee associated with the invention? 

-3- 

-A0351 - 

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A proper response to these questions would make it clear 

to the Examiner and place facts on record whether the 

invention was reduced to practice before the earliest 

reference with or without any "public use" or "on sale" 

activities. Refer to MPEP 2133.03 for the explanation of 

"On Sale" or "Public Use." In the case of the facts 

revealing that the invention was involved in "public use" 

or "on sale" activities, the 35 U.S.C. 102(b) rejections 

based upon a public use or sale of the invention will be 

maintained. If the facts reveal otherwise, the rejection 

will be withdrawn. 

34. On June 3, 2009, responding to the December 3, 2008 final office 

action, FutureLogic stated: 

Applicant submits herewith but under separate letter, a 

Supplemental Declaration under 37 C.F.R. § 1.131 in 

order to further clarify the circumstances under which the 

promotional printer described in Applicant's two previous 

Declarations under 37 C.F.R. 1.131 dated February 11, 

2008 and August 12, 2008, was reduced to practice .... 

Furthermore, and in accordance with Applicant's 

understanding of the rejection under 35 U.S.C, § 102(b), 

Applicant respectfully requests that the Examiner 

consider the additional information supplied in the 

Supplemental Declaration. Based on that additional 

information, Applicant submits that the present invention 

was neither made accessible to the public, nor used 

commercially, nor offered for sale or sold, before the 

critical date of March 29, 2001. Accordingly, Applicant 

respectfully requests consideration and withdrawal of the 


35. On June 26, 2009, FutureLogic filed Mr. Meyerhofer's third 

declaration, which was intended to accompany the June 3, 2009 response, 

indicating that the submission was "inadvertently delayed." FutureLogic further 

indicated, "The contents and sufficiency of the supplemental declaration were 

discussed with the Examiner in a telephonic interview prior to the submission of the 

Proposed 

Additions to 

Answer 

-A0352- 

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Document 64-3 

#: 1244 

Filed10/07/11 Page6ofl0 PagelD 

previous response dated June 3, 2009." The third Meyerhofer declaration states: 

6. On or before December 19, 2000, 

FutureLogic entered into a codevelopment project with a 

soft drink manufacturer for a promotional couponing 

system for use with vending machines. FutureLogic and 

the soft drink manufacturer shared the costs of the project 

which resulted in payments to FutureLogic to cover a part 

of FutureLogic's costs. During the project and for a 

period of time afterward, both FutureLogic and the soft 

drink manufacturer were subject to a mutual non- 

disclosure agreement regarding the project. 

7. As part of Future Logic's contribution to the 

project, a number of prototype promotional printers 

having the features of the invention were constructed by 

FutureLogic for experimental use during the period of the 

project .... 

8. After being constructed, the prototype 

promotional printers were operated for a period of time by 

FutureLogic and the soft drink manufacturer as described 

in my previous declarations under 37 CFR § 1.131 dated 

February 11, 2008 and August 12, 2008. The purpose of 

this operational period was to test the operation of the 

prototype promotional printers in vending machines. The 

test results were used to further refine the design of the 

prototype promotional printers. During this operational 

period, the prototype promotional printers were only 

accessible by the technical personnel of Future Logic and 

the soft drink manufacturer and were not accessible by the 

public. 

9. At the end of the project, a decision was 

made not to commercialize the prototype promotional 

printer design and none of the prototype promotional 

printers were sold nor were they offered for sale. 

37. On June 25, 2009, the PTO issued a Notice of Allowance mid 

withdrew its 35 U.S.C. § 102(b) rejection based upon FutureLogic's 


Proposed 

Additions to 

Answer 

38. On March 20 and March 31, 1997, FutureLogic signed two Non- 

-A0353- 

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#: 1245 

Disclosure agreements with Coca-Cola. Neither agreement imposed any 

confidentiality obligations upon Coca-Cola. After signing the agreements, 

FutureLogic developed a promotional printer for use in Coca-Cola's vending 

machines. 

39. FutureLogic avers in an interrogatory response that the invention of 

the '855 Patent was conceived by September 3, 1997, and was reduced to practice 

by January 21, 1998. 

40. On or about April 25, 1999, FutureLogic sent a letter to Coca-Cola that 

provided quotes to Coca-Cola for a "CCUSA" printer, describing it as a "highly 

customized printer." The letter states: "What is proposed is a true product price; 

[there] have been no omissions which can lead to product up charges after the 

award of the contract." 

41. The April 25 quote included prices for production units based upon 

quantity ($395 to $450) and prices for two phases of prototypes ($17,500 and $850, 

respectively). 

42. On July 16, 1999, Coca-Cola responded to FutureLogic's April 25 

Order and ordered twenty-four CCUSA printers from FutureLogic. 

43. On or about October 18, 1999, Futurelogic sent a letter and revised 

product quotation to Coca-Cola for the PSA-66-VM or VM printer. 

44. The VM printer set forth in the October 18 letter with price quotations 

is the same Coca-Cola printer referred to by Mr. Meyerhofer in his first, second and 

third declarations to the PTO. 

45. The October 18 letter included higher prices for production unit 

quantity ($402.50 to $457.50) and phase I prototypes ($23,500) compared to the 

April 25 letter, but the same price ($850) for phase two prototype units. The price 

changes reflected the additional features requested by Coca-Cola. 

46. In November 1999 and April 2000, Coca-Cola sent purchase orders to 

Proposed -6- 

Additions to 

Answer 

-A0354-


#:1246 

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printers. 

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By March 10, 2000, Futurelogic had produced at least fifteen VM 

48. After receipt of Coca-Cola's April 2000 purchase order, on or about 

April 14, 2000, Futurelogic shipped the 24 VM Printers to Coca-Cola. Invoices for 

these units were issued by FutureLogic on April 17, 18 and 20, 2000, respectively, 

to Coca-Cola. 

49. Futurelogic was not privy to the locations or the models of the vending 

machines in which Coca-Cola installed the printers for use in the field. 

50. Coca-Cola placed the 24 VM printers at locations throughout 

Cincinnati, Ohio and FutureLogic was not present when Coca-Cola installed the 

units in the field for use by customers of its vending machines. 

51. The VM printers were still in use as of February 15, 2001 and the field 

test was successful. 

52. Out of the 24 VM printers provided to Coca-Cola, Coca-Cola returned 

only two or three printers to Futurelogic for repair or replacement. 


and his patent attorney intentionally failed to disclose to the PTO the April 25 and 

October 18, 1999 offers for sale, the sale of 24 prototype units to Coca-Cola or the 

public use activity in Cincinnati, Ohio. 


and its patent attorney knowingly made false statements to the Fro concerning the 

existence of a mutual non-disclosure agreement, the sharing of costs, the operation 

of the prototype units sold to Coca-Cola and the experimental use of such 

prototypes by Coca-Cola. Pursuant to Fed. R. Civ. P. 8(d)(2), in the alternative, if 

the "claimed invention" described in Mr. Meyerhofer's declarations and in remarks 

to the PTO by its patent attorney, is represented or determined to not include all 

Proposed -7- 

Additions to 

Answer 

-A0355- 

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claims of the '855 patent, FutureLogic, the inventor and its patent attorney made 

knowingly false statements that all claims of the '855 patent were reduced to 

practice. 

55. But for the non-disclosures and knowingly false statements, the '855 

patent would not have issued. 

First Amended Answer and Counterclaims at 12:10-26: 

THIRD COUNTERCLAIM 

(Declaratory Judgment of Inequitable Conduct and Unenforceability of the 

'855 Patent) 

62. Nanoptix incorporates by reference the allegations of paragraphs 24 

through 55 of this Counterclaim as if fully set forth herein. 


concerning unentbrceability of the '855 patent. 

64. The '855 patent is unenforceable by FutureLogic because it obtained 

the patent through inequitable conduct committed on the PTO. FutureLogic, the 

inventor and its patent attorney substantively involved in the preparation or 

prosecution of the application the '855 patent, committed fraud on the PTO by 

deliberately submitting false declarations and misrepresenting and omitting material 

information of the offers for sale, sales and public use of the claimed invention in 

the United States prior to March 29, 200 !, with the specific intent to deceive the 

PTO. The PTO would not have allowed the '855 patent claims had it known of the 

offers for sale, sales and public use of the claimed invention. 

Prooosed 

Additions to 

Answer 

-A0356- 

-8-

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Dated: October 7, 2011 

Proposed 

Additions to 

Answer 


#: 1248 

-A0357- 

By:/s/ Michael D. Rounds 



WATSON ROUNDS 



-9- 

Attorneys for 

Defend_m_/Counterclaimant 

Nanoptix, Inc. 

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WATSON ROUNDS 


Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 


E-Mail: ayowell @ watsonrounds.com 




1333 2"° Street, Suite 500 


Telephone: (310)451-0647 

Facsimile: (310) 394-4477 



Attorneys for DefendantCounterclaimant Nanoptix, h_c. 


V. 


NANOPTIX, [NC, 





[Proposed] Order -1- 

-A0358- 


[PROPOSED] ORDER

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The Court, having considered NANOPTIX, INC.'S ("Nanoptix") Motion for 


Defense ("Motion"), as well as oral argument, presented before the Court, finds 

that Nanoptix has demonstrated good cause to amend the Scheduling Order and 

amend its Answer with Inequitable Conduct Counterclaim and Defense and 

therefore, 

IT IS HEREBY ORDERED THAT: 

Nanoptix's Motion for Leave to File Amended Answer with Inequitable 

Conduct Counterclaim and Defense against Plaintiff FUTRELOGIC, INC. is 

GRANTED. 

Dated: October __, 2011 

Submitted by: 

By: Is Michael D. Rounds 



WATSON ROUNDS 




-A0359- 

Hon. John. F. Walter 

United States District Judge 

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Rounds, and that on this date, a copy of the foregoing PROPOSED ORDER 

GRANTING NANOPTIX'S MOTION FOR LEAVE TO AMEND THE 

SCHEDULING ORDER AND ANSWER has been served upon the following 

counsel of record registered i.n this matter via the Court's ECF procedure. 

Dated October 7, 2011 By: /s/Robert Hunter 



-A0360-

Cas 2:10-cv-07678-JFW-DTB Document 65 Filed 10/07/11 Page 1 of 26 Page ID 

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BRETT J. WILLIAMSON (s.B. # 145235) 

bwilliamson_?,omm.com 

MICHAEI_ L. MYERS (S.8. #240652) 

mmvers(i?.,omm.com 

O'ME_VENY & MYERS LLP 



Telephone: (949) 760-9600 

Facsimile: (949) 823-6994 




V. 




Plaintiff, 

Defendant. 

-A0361 - 

Case No. CV 10-07678-JFW (DTBx) 

FUTURELOGIC'S MEMORANDUM 

OF POINTS AND AUTHORITIES IN 

OPPOSITION TO DEFENDANT'S 





Hearing Date: 10/31./2011 

Pre-Tnal Conference: 12/16/2011 

Trial Date: 1/10/2012 

OI?POSITION TO I)I'21qZ.NI)AN'r's MOTION FOR 

SUMMARY JUDGMI?,NT 

CV 10-07678-JFW (DTBX)

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2:10-cv-07678-JFW-DTB Document65 Filed 10/07/11 Page 2 of 26 Page ID 

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I. 

.[[. 

III. 


Page 

INTRODUCTION ........................................................................................... 1 

STATEMENT OF FACTS .............................................................................. 2 

A. By January 21 1998, FntureLo_ic Had Built A Prototype Printer 

Intended ]#or _okheim That Emgoodied The 855 Patent ...................... 2 

B. Separately From The Tokheim Project, FutureLogic Worked 

With Coca-Cola To Develop A Coupon Printer For Vending 

Machines ......................................... ii .................................................... 3 

1. Information Regarding The Coupon Printer Developed 

For Coca-Cola Was Regarded As Confidential By All 

Parties .......................................................................................... 3 

2. Plans For The Coupon Printer For Coca-Cola Continued . 

To Evolve Over The Course Of The Project .............................. 4 

3. Futn,reLogic Provided Prototype Printers That Embodied 

The 855 Patent To Coca-Colfi For Experimental 

Purposes ...................................................................................... 6 

4. FutureLogic And Coca-Cola Developed And Carried Out 

Test Procedures For DetenniningWhether The Prototypes 

Would Work Under Conditions Of Actual Use ......................... 7 

5. FutureLogic Reqnested, And Coca-Cola Provided_ 

Periodic Reports Regarding The Field Testing Of The 

Prototype Pi'inters ....................................................................... 7 

C. FutureLogic Disclosed To The USPTO RelevaJat Information 

Regarding The Coca-Cola Development Project And The 

USPTO Determined The 855 Patent ShouldBe Granted .................... 9 

ARGUMENT ................................................................................................ 10 

A. Experimental Use Negates Invalidity for Alleged Sales, Offers 

to Sell, and Public Use Under 35 U.S.C. § 102(b) ............................. 11 

1. Experimental Use Negates Invalidity Under 35 U.S.C. § 

102(b) When A Sale, Offer For Sale, Or Use Is Primarily 

Expernnental Rather Than Commercial ................................... 11 

2. The Experimental Use Doctrine Is Applicable After An 

Invention Has Been Reduced To Practice ................................ 12 

B. Prototype Sales, Offers To Sell, And Testing That Occurred 

DuringThe Coca-Cola Printer Development Project Were 

Primarily For Experimental Purposes ................................................. 13 

1. All Parties Involved In Tim Development Project Treated 

Information Regarding FutureLogic's hlvention As 

Confidential .............................................................................. 15 

2. FutureLogic Closely Monitored Testing Of The Prototype 

Printers And Made Modifications As A Result Of Such 

Testing ...................................................................................... 17 

-A0362- 

-i- 

OPPOSITION TO DEFENDANT'S MOTION FOR 


CV-10-07678-JFW (DTBX) 

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IV. 

C, 


(continued) 

Page 

3. Coca-Cola :_ s Payment 1" 

To FutureLogtc For Protoypes 

Does Not Demonstrate Commercial-Sales, OffersTo Sell, 

Or Public Use ............................................................................ 19 

The Quotations Dated April 25, 1999, And October 18, 1999, 

WereNot Offers To Sell Printers That Embodied The '855 

Patent ................................................................................................... 21 

C ONCLUSION ............................................................................................. 22 

-A0363- 



-ii- CV-10-O7678-JFW (DTBX)

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,2:10-cv-07678-JFW-DTB Document 65 Filed 10/07/11 Page 4 of 26 Page ID 

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CASES 

TABLE OF AUTHORITIES 

Allied ColloMs lnc. v. Amer. Cyanamid Co., 

Page(s) 

64 F.3d 1570 (Fed. Cir. 1995) ................................................................................... 11, 16 

Armco, hw. v. Cyclops Corp., 

791 F.2d 147 (Fed. Cir. 1986) .................................................................................. passim 

Atlanta Attachment Co. v. Leggett & Platt; Inc., 

516 F.3d 1361 (Fed. Cir. 2008) (Prost, J. and Dyk, J. concurring) ........... 12, 13, 19 

Continental Can Company USA, Inc. v. Monsanto Co., 

948 F.2d 1264 (Fed. Cir. 1991) ................................................................................ 18, 19 

Corona Cord Tire Co. v. Dovan Chemical Corp., 

276 U.S. 358 (1928) .......................................................................................................... 13 

Eli-Lilly And Co. v. Zenith Goldline Pharms., Inc., 

471 F.3d 1369 (Fed. Cir. 2006) ................................................................................ 12, 13 

In re Mahurkar Double Lumen Hemodialysis" Catheter Patent Litigation, 

71 F.3d 1573 (Fed. Cir. 1995) ....................................................................... 11, 13, 16,21 

Kolmes v. World l;'ibers' Cotp., 

107 F.3d 1534 (Fed. Cir. 1997) ...................................................................................... 14 

Lisle Corp. v. A.,L Mfg. Co., 

398 F.3d 1306 (Fed. Cir. 2005) ................................................................................ 11, 12 

Moleculon Res. Corp. v. CBS, lnc., 

793 F.2d 1261 (Fed. Cir. 1986) ................................................................................ 15, 16 

Monon Corp. v. Stoughton Trailers, Inc., 

239 F.3d 1253 (Fed. Cir. 2001) ...................................................................... l, 12, 14, 20 

PJaff v. Wells Electronics, In c., 

525 U.S. 55 (1998) ........................................................................................... 11, 12, 13,2:1 

STATUTES 

35 U.S.C. § 102(b) ............................................................................................................ passim 

-A0364- 

-iii- 



CV- 10-07678-JFW (DTBX 

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.,2:10-cv-07678-JFW-DTB Document 65 Filed 10/07/11 Page 5 of 26 Page ID 

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I. INTRODUCTION 

FutureLogic, Inc. ("FutureLogic") submits this opposition to the motion for 

summary judgment of invalidity filed by Nanoptix, Inc. ("Nanoptix"). Nanoptix's 

motion asserts that a joint development project between FutureLogic and the Coca- 

Cola Company ("Coca-Cola") constituted an invalidating offer for sale, sale, and 

public use tinder 35 U.S.C. § 102(b). However, FutureLogic already described this 

development project to the United States Patent & Trademark Office ("USPTO") 

during prosecution of the '855 Patent and the USPTO found the claims patentable 

in view of that project. (See Rounds Decl. Ex. 3 (Meyerhofer Declaration).) 

First, FutureLogic's development of a printer with Coca-Cola does not 

constitute an invalidating sale, offer to sell, or public use under Section 102(b). The 

evidence shows that FutureLogic developed prototype printers and provided them 

to Coca-Cola for the experimental purpose of determining whether the printers were 

suitable for their intended purpose of printing coupons and other documents in a 

vending machine under conditions of actual use. The law is clear that "evidence 

that a public use or sale of [a] patented device was primarily experimental may 

negate an assertion of invalidity" under Section 102(b). See Morion Corp. v. 

Stoughmn Trailers', Inc., 239 F.3d 1253, 1258 (Fed. Cir. 2001). Here, the evidence 

shows that FutureLogic and Coca-Cola developed detailed procedures for testing 

the prototype printers, FutureLogic helped install the prototype printers mid trained 

Coca-Cola personnel regarding their use, and Coca-Cola personnel provided 

frequent and detailed reports to FutureLogic concerning the field tests of the 

prototypes and their capability to perform the functions later claimed in the '855 

Patent. Thus, the purpose of the development project was experflnental and the 

alleged sale, offers to sell, and public use of prototypes in connection with the 

project were conducted pursuant to the experimental purpose. 

Second, Nanoptix confuses several completely different printers in asserting 

that FutureLogic offered for sale a printer that embodies the '855 Patent claims 

-A0365- 

OPI-"OSITION TO DEFI_NDAN'f'S M(EFION FOR 

I SUMMARY JUDGMENT 


Cas, ._2:10-cv-07678-J FW -DTB 

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Document 65 Filed10/07/11 Page6of26 PagelD 

#: 1257 

before the critical date, Nanoptix points to FutureLogic's statement in all 

interrogatory response that the '855 Patent claims were reduced to practice by the 

construction of a printer on or before January 28, 1998, (Dkt. No. 55 at 4.) But this 

January 28, 1998 date of reduction to practice relates to a prototype gas pump 

printer FutureLogic created for a company called Tokheim, not the vending 

machine printer later built and provided to Coca-Cola. (FutureLogic's Statement 

Of Genuine Issues Of Material Fact ("Facts"), 49-55.) The gas pump printer was 

tested only in FutureLogic's private facilities and was never sold or even 

demonstrated for Tokheim. (ld. 52.) The printer that FutureLogic ultimately 

provided to Coca-Cola, prototype model nmnber PSA-66-VM, was not 

mmmfactured until March of 2000. The two printers that were the subject of 

alleged offers for sale to Coca-Cola in 1999--"KBCOK-66" and °'Custom 

CCUSA"_were never even built. (Facts, 76, 81 .) 

There is at least a genuine issue of material fact that requires denial of 

Nanoptix's motion for summary judganent because the evidence shows that the 

alleged sale, offers to sell, and field trials of FumreLogic's PSA-66-VM printers 

were experimental rather than commercial, which negates invalidity under 

Section 102(b). The evidence further shows that the alleged offers for sale in 1999 

related to hypothetical printers that were never built and therefore cannot be said to 

have embodied the '855 Patent. Nanoptix's motion for summary judgment of 

invalidity should be denied. 

II. STATEMENT OF FACTS 

A. By January 21_ 1998_ FutureLo_ic Had Built A Prototype Printer 

Intended For "l okheim That Embodied The '855 Patent 

On January 2 l, 1998, FutureLogic completed the firmware for a prototype 

gas pump printer wifll model number PMC-2010A. (Facts, 49.) The PMC-2010- 

A printer was designed to print vouchers and coupons using data received from two 

different sources--namely, a gas pump controller and a network promotional 

-A0366- 

OPPOSITION TO ])EFII_NDANT_S MOI'ION FOR 

2 SUMMARY JUDGMENT 

CV 10-07678-JFW (DTBX) 

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._2:10-cv-07678-JFW-DTB Document 65 Filed 10/07/11 Page 7 of 26 Page ID 

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controller. (Facts, 50.) FutureLogic planned to market the PMC-20I 0-A printer 

to Tokheim, a company with which FutureLogic had been doing business oil gas 

pump printers. (Facts, 7 51 .) FutureLogic completed the prototype but never 

demonstrated it or marketed it to Tokheim or anyone else outside FutureLogic. 

(Facts, 52.) 

B. Separately From The Tokheim Proiect_ FutureLogic Worked 

With Coeii-Cola To Develop A Coupon Printer For Vending 

Machines 

Meanwhile, in 1997, FutureLogic began working with Coca-Cola on a 

project to develop a coupon printer to be used in vending machines. (Facts, 56.) 

FutureLogic was introduced to Coca-Cola by Dave Uland, president of a labeling 

equipment company called Interleave Systems that had done previous projects for 

Coca-Cola. (Facts, 77 58-59.) Coca-Cola had approached Interleave and expressed 

interest in a coupon printer for use in vending machines. (Facts, 7 58.) Mr. Uland 

recognized that Coca-Cola did not yet have a precise idea of the type of printer it 

desired and that Coca-Cola would need an outside company to design a custom 

printer. (Facts, 758.) Mr. Uland, who was fmniliar with Mark Meyerhofer's work 

on earlier printer projects, recommended Mark Meyerhofer, who was then president 

of FutureLogic, to develop a specification for a custom coupon printer suitable for 

Coca-Cola's intended use. (Facts, 7 590 

1. Information Regardin_ The Coupon Printer Developed For 

Coca-Cola WasRegar0ed As Confidential By All Parties 

With Mr. Uland acting as a local technical support representative for 

FutureLogic, FutureLogic agreed to work with Coca-Cola to develop a custom 

coupon printer for vending machines. (Facts, 60.) Information exchanged among 

FutureLogic, Interleave Systems, and Coca-Cola was considered confidential and 

treated as such by all parties. (Facts, 61-63.) Simmy Ahluwalia, Coca-Cola's 

engineer responsible for the vending machine printer product, stated that 

"information exchanged among FutureLogic, Inc. and The Coca-Cola Company 

-A0367- 

OPPOSt'IION TO I)I_FI?.NDANT'S MO'IT1ON FOR 


CV t0-07678-JFW (DTBX)

Cas, 2:10-cv-07678-JFW-DTB 

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Document 65 

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Filed 10/07/11 Page8of26 Page ID 

during the primer development project was treated as confidential by all parties 

involved in this field test." (Facts, 62.) In addition, Mr. Uland's testimony, and a 

contemporaneous email message he sent to Mark Meyerhofer, demonstrate that Mr. 

Uland and Interleave Systems "always" treated FutureLogic's technical information 

as confidential. (Facts, 63-65.) 

In addition, an August 26, 1999 letter agreement proposed and signed by 

Coca-Cola (though not countersigned by FutureLogic) indicates Coca Cola's 

acknowledgement and understanding that the parties' past and future disclosures of 

proprietary information were and would be pursuant to a "confidential relationship" 

and subject to a "secrecy obligation." (Facts, 66.) Further, the technical 

specification prepared by FutureLogic concerning the communications protocol for 

the prototype printers provided to Coca-Cola states: 

Any party receiving tiffs document is hereby notified that 

it is not a public document. This document contains 

PROPRIETARY and CONFIDENTIAL information of 

FutureLogic, Inc. Disclosure of this document to other 

parties is controlled by non-disclosure agreement with the 

disclosing party. 

(Facts, 67.) This document was provided to Coca-Cola, clearly confinning to 

Coca-Cola that FutureLogic required its technical information to be maintained as 

confidential. (Facts, 67.) 

2. Plans For The Coupon Printer For Coca-Cola Continued To 

Evolve Over The Course Of The Project 

Nanoptix asserts that "[b]y April 17, 1997 there was a printer specification 

drafted by third party Interleave Systems that disclosed a dual port promotional 

printer embodimem for receiving coupon and voucher data and printing both 

documents. (Dkt. No. 55 at 4, citing Rounds Exhibit 9.) Not so. The 1997 

specification expressly provides that the printer's interface had the ability to 

communicate via either the MDB port or the RS232 port, but not both. (Facts, 

-A0368- 

OPPOSITION TO DEI"ENDANT'S MOTION I"OR 


CV 10-07678-JFW (DTBX) 

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56.) Thus, the printer contemplated by the 1997 specification did not embody the 

claims of the '855 Patent. (Facts, 7 56.) 

Although FutureLogic had considered in 1997 and 1998 that a custom printer 

for Coca-Cola could entail a dual-port printer for printing vouchers and coupons, 

such a design was far from settled in that time frame. (Facts, 7 68-70.) For 

example, FutureLogic and Coca-Cola continued to contemplate developing a 

printer that would receive coupon and voucher data from a modified vending 

controller through a single communication port. (Facts, 7 70.) In addition, during 

the course of tile project, FutureLogic and Coca-Cola considered using a dispenser 

of pre-printed coupons instead of installing an actual coupon printer in the vending 

machine. (Facts, 70.) Neither of these designs would have embodied the claims 

of the '855 Patent. (Facts, 7 70.) Several model numbers were used in 

correspondence from FutureLogic to Coca-Cola during the development project. 

(Facts, 7 71 .) Because "the project was evolving," there were differences between 

the products represented by different model numbers used at different times. 

(Facts, 7 71.) 

Moreover, many model numbers identified in correspondence between 

FutureLogic and Coca-Cola represent products that were never built at all. On 

April 25, 1999, in response to a request from Coca-Cola, FutureLogic sent a 

"Product Quotation" for various quantifies of a printer with model number 

KBCOK-66. (Facts, 77 31, 73.) As Mark Meyerhofer explained, this infonnation 

was provided at Coca-Cola's request to provide "ballpark printer pricing" to "make 

sure we were converging on a solution [Coca-Cola] could afford." (Facts, 7 74.) 

At the time of the April 25, 1999 Product Quotation, "there was no physical unit" 

that could have been sold to Coca-Cola. (Facts, 7 75.) In fact no KBCOK-66 

printer was ever built. (Facts, 7 76.) Whether the KBCOK-66--if it had ever been 

built--would have embodied the '855 Patent claims is a hypothetical question that 

cannot be answered because the April 25, 1999 proposal only led to further changes 

-A0369- 

Ol?l-"OSrl'lON TO ])I?;FENI)ANT'S MOTION FOR 

5 SUMMARY JUDGlvlEI',rr 

CV 10-07678-.IFW (I)TBX)

Case 2:10-cv-07678-JFW-DTB Document 65 Filed 10/07/11 

#:1261 

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to the product specification. (Facts, 1 77.) 


O11 October 18, 1999, FutureLogic sent a "revised product quotation" to 

Coca-Cola providing "prototype charges"--that is, non-recurring engineering 

(NRE) fees for building 2 "alpha'" and 2 "beta" prototype units. (Facts, 1 78.) In 

addition to providing these prototype charges, the October 18, 1999 document 

again provided ballpark pricing for various quantities of a hypothetical printer-- 

model number "PSA-66-CC"---to allow both parties to assess whether the project 

continued to be worthwhile to pursue. (Facts, 1 79-80.) Like the KBCOK-66, the 

PSA-66-CC printer was apparently never bnilt. (Facts, 1 81.) 

3. FutureLo_ie Provided Prototype Printers That Embodied 

The '855 Patent To Coca-ColaTor Experimental Purposes 

Ultimately, FutureLogic built a small number of prototype printers that 

embodied the claims of the '855 Patent. These printers, which had the model 

number PSA-66-VM, are the same prototype printers described in the declarations 

of Mark Meyerhofer submitted to the USPTO during prosecution of the '855 

Patent. (Facts, 11 82-83.) Unredacted versions of photographs submitted to the 

USPTO indicate that the prototypes were manufactured in March of 2000. (Facts, 1 

84.) This is consistent with documents showing that firmware for the Coca-Cola 

prototype was completed in March and April 2000. (FUT00109005; E. Meyerhofer 

Decl. 1 85.) 

FutureLogic delivered 24 of the PSA-66-VM prototypes to Coca-Cola 

Enterprises ("CCE")--the bottling company for Coca-Cola--in approximately 

April of 2000. (Facts, 1 82.) CCE paid certain "prototype fees," which would have 

included a portion of FutureLogic's non-recurring engineering costs and costs for 

raw materials for manufacturing the prototypes. (Facts, 86-87.) FutureLogic did 

not realize any profit from the prototype fees paid by CCE; rather, these fees simply 

defrayed a portion of FutureLogic's costs of developing mad building the 

prototypes. (Facts, 88.) FutureLogic was a small company--having 

-A0370- 

OPPOSITION TO I)EI"I_,NI)ANT'S MOTION FOR 

6 SUMMARY J UDGMI'NT 

CV 10-07678-JFW (DTBX) 

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approximately 10 employees at the time--and could not afford to embark on a large 

development and testing project without receiving any income. (Facts, 1 89.) 

Accordingly, Coca-Cola and FutureLogic agreed to share the costs of developing 

and testing prototypes. (Facts, 1 89.) 

4. FutureLogic And Coca-Cola Developed And Carried Out 

Test Procedures For DeterminingWhether The Prototypes 

Would Work Under Conditions Of Actual Use 

Pursuant to FutureLogic's and Coca-Cola's development project, Coca-Cola 

and CCE used the PSA-66-VM prototypes in "field trials" to detennine whether 

they would work for their intended purpose of printing coupons under conditions of 

actual use in a vending machine placed in the field. (Facts, 1 90.) Before the field 

trials, FntureLogic engineers worked with Coca-Cola engineer Mr. Ahluwalia to 

develop a detailed plan for testing flae printing ability of the PSA-66-VM in 

vending machines. (Facts, 11 91-92.) To determine whether the printer would 

work for its intended purpose in vending machines and under conditions of actual 

use, it was necessary to test the printer in various environmental conditions-- 

including, for example, different humidity levels and voltage variations. (Facts, 

93.) 

Scott Shimmin, FutureLogic's project manager for the Coca-Col a printer 

project, visited CCE to help install the prototypes in vending machines at the 

commencement of the field trials. (Facts, 94.) Mr. Shimmin trained Coca-Cola 

and CCE personnel in how to load coupon data into the printers and how to use the 

FutureLogic prototype printers for printing coupons. (Facts, 1 95.) 

When the PSA-66-VM prototypes were installed in vending machines for the 

field trials, they were placed in a locked compartment inside the vending machine 

cabinet and were not visible to the public. (Facts, 96.) 

5. FutureLogic Requested, And Coca-Cola Provided, Periodic 

Reports Regarding The Field Testing Of The Prototype 

Printers 

At the beginning of the field trials, FutureLogic provided Coca-Cola a 

-A0371 - 

OPPOSI'IION TO DEFENDANT'S MOTION FOR 




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detailed form on which Coca-Cola was asked to report any problems with the 

prototype printers in the field and to describe any actions taken to successfully 

return the prototype printers to normal operation. (Facts, 1 97-98.) During the 

course of the field trials, Coca-Cola and CCE personnel periodically provided 

reports to engineers at FutureLogic--including Mark Meyerhofer and engineers 

working under his direction--regarding the progress of the trials and various issues 

that had arisen. (Facts, 1 97, 99-100.) This is confirmed by the Declaration of 

Simmy Ahluwalia filed by Nanoptix. Mr. Ahluwalia, a former Coca-Cola 

employee involved in the co-development project, referred to Coca-Cola's use of 

FutureLogic prototype printers as "field tests" and stated that employees working 

on the project regularly sent letters, emails, and agenda items to each other and to 

FutureLogic concerning the tests. (Facts, 11 112-113.) 

Numerous contemporaneous documents show the communications between 

FutureLogic, Coca-Cola, and CCE concerning the field trials. Ou April 30, 2000, 

Mr. Ahluwalia sent a report to Mark Meyerhofer and Scott Shimmin containing his 

"Initial Observations" after he evaluated several of the printers at their test sites. 

(Facts,, 1 100.) On May 11,2000, Mr. Ahluwalia sent another report to Eric 

Meyerhofer aud Scott Shimlnin (who forwarded the report to Mark Meyerhofer) 

regarding difficulties the printer was experiencing in receiving data from the 

vending controller. (Facts, 1 101.) Mr. Ahluwalia reported problems he 

experienced trying to print certain coupons. As a result, Coca-Cola returned one of 

the printers and a set of"coupon files" to FutureLogic for analysis. (Facts,, 101.) 

On June 21, 2000, Mr. Ahluwalia provided a detailed report to Scott 

Shimmin and others regarding the results of reliability testing performed at Coca- 

CoWs laboratory in Atlanta. (Facts, 1 102.) Mr. Ahluwalia stated that the purpose 

of the three tests was (1) "to gauge printer reliability after a set number of vends," 

(2) "to gauge coupon frequency and consistent reliability," and (3) "to gauge 

coupon frequency specifically." (Facts, 1 103.) The ability to reliably print 

-A0372- 

OPPOSI'I'ION TO DEFENDAN-Y_S MOTION FOR 

8 SIJIvlMARY JUDGMENT 

CV 10-07678-JFW (DTBX) 

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coupons was critical to the purpose of the claimed invention. Claim 1, for exmnple, 

requires a processor adapted to receive coupon data and use the coupon data to 

generate a coupon. (Facts, 117.) 

On June 27, 2000, Eric Meyerhofer and Scott Shimmin received reports from 

Coca-Cola and from the vending machine manufacturer, Coinco, regarding 

difficulties with the communication from the vending controller to the printer. 

(Facts, 7 104-106.) These challenges occurred in part because of the '"noisy' 

power environment that a vending machine represents." (Facts, 105.) The ability 

to reliably receive data from the vending controller was also critical to the purpose 

of the claimed invention. Claim 1 requires a main communication port adapted to 

receive voucher data from a machine controller. (Facts, 118.) 

On July 10, 2000, Mr. Ahluwalia distributed a detailed "Technical Status 

Report on the Coupon Printer Field Test in Cincinnati." (Facts, 107.) Mr. 

Ahluwalia described certain "technical glitches associated with the printer and the 

new controller" and stated that new software versions at been uploaded to both the 

printer and the controller during the course of the testing. (Facts, 108.) Mr. 

Ahluwalia stated that he would provide another status update the following month. 

(Facts, 109.) Such reporting continued through the course of the field trials. 

(Facts, 7 110-114.) 

At the end of the field trials, Coca-Cola determined not to commercialize the 

coupon printer. (Facts, 115.) 

C. FutureLogic Disclosed To The USPTO Relevant Information 

Regarding The Coca-Cola Development Project And The USPTO 

Determined The '855 Patent Should He Grafited 

During prosecution of the '855 Patent, Mark Meyerhofer submitted a 

declaration informing tile USPTO of the Coca-Cola printer development project 

and providing the relevmlt details regarding that project. (Facts, 119.) Mr. 

Meyerhofer informed the USPTO that Coca-Cola--referred to in his declaration as 

"tile soft drink manufacturer"--made payments to cover part of FutureLogic's costs 

-A0373- 

OPPOSITION TO I)EFI_,NDAN'I"S MOTION FOR 


C V 10-07678-JFW (DTBX)

Cas_ 2:10-cv-07678-J FW -DTB 

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of developing the "promotional couponing system." (Facts, 120.) Mr. 

Meyedlofer further informed the USPTO that a number of prototype printers that 

embodied the '855 patent were constructed by FutureLogic for experimental use 

during tile period of the project. (Facts, 121 .) Mr. Meyerhofer filrther infonned 

the USPTO that the prototype printers were operated for a period of time by 

FutureLogic and the soft drink manufacturer and that the prototype printers were 

accessible only to personnel of FutureLogic and the soft drink manufacturer. 

(Facts, 122.) In addition, Mr. Meyerhofer informed the USPTO that FutureLogic 

and Coca-Cola exchanged infonnation subject to a mutual confidentiality 

agreement. (,Facts, 123.) Finally, Mr. Meyerhofer informed the USPTO that a 

decision was made not to commercialize the prototype printers and the printers 

were therefore not sold or offered for sale. (Facts,, 124.) With full awareness of 

these facts, the USPTO detennined that the claimed subject matter of the '855 

patent was patentable. (Facts, 125.) 

lII. ARGUMENT 

Nanoptix identifies several events that it contends invalidate the '855 Patent 

trader Section 102(b). First, Nanoptix asserts that the claimed invention of the '855 

Patent was offered for sale to Coca-Cola on April 25, 1999. Second, Nanoptix 

asserts that the claimed invention was offered for sale to Coca-Cola on October 18, 

1999. Third, Nanoptix asserts that 24 prototype units embodying the claimed 

invention were sold to Coca-Cola in approximately April 2000 and thereafter 

placed into public use. Because these alleged acts were conducted primarily for 

experimental rather than commercial purposes, they do not constitute invalidating 

events under Section 102(b). 

In addition, the alleged offers for sale are not invalidating events under 

Section 102(b) because there is no evidence that any printers offered for sale on 

those dates would have met the requirements of the '855 Patent claims. Indeed, no 

printers having the model numbers identified in the April 25 and October 18, 1999, 

-A0374- 

OPPOSITION "['O 1)EFI?,NDANT_S MOTION FOR 

1 0 SUMMARY JUDGMENrr 

CV 10-07678-JFW (DTBX) 

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product quotations were ever built. 

A. Experimental Use Negates Invalidity, for Alleged Sales, Offers to 

Sell_ and Public Use Under 35 U.S.C. § 102(B) 

In PJaffv. Wells' Electronics, hw., 525 U.S. 55 (1998), the Supreme Court 

announced two conditions that must be satisfied before the "on-sale bar" of 35 

U.S,C. § 102(b) applies to invalidate a patent. First, "the product must be the 

subject of a commercial offer for sale." Pfaff, 525 U.S. at 67 (emphasis added). 

This analysis requires determining whether "the sale was commercial rather than 

experimental in nature." Id. Second, the invention must "ready for patenting." ld. 

An invention is ready for patenting if it has been reduced to practice or if the 

inventor has prepared sufficiently specific drawings or descriptions of the invention 

to enable a person skilled in the art to practice it. Id. at 67-68. 

l. Experimental Use Negates Invalidity Under 35 U.S.C. § 

102(b) When A Sale, Offer For Sale, Or Use Is Primarily 

Experimental Rather Than Commercial 

An accused infringer bears the burden to prove invalidity by clear and 

convincing evidence. Lisle Corp. v. A.JI Mfg. Co., 398 F.3d 1306, 1316 (Fed. Cir. 

2005). To prove invalidity based on a sale or offer to sell, "the accused infringer 

must prove by clear and convincing evidence that there was a definite sale or offer 

to sell more than one year before the application for the subject patent, and that the 

subject matter of the sale or offer to sell fully anticipated the claimed invention." In 

re Mahurkar Double Lumen Hemodialysis Catheter Patent Litigation, 71 F.3d 

1573, 1576 (Fed. Cir. 1995). Likewise, to prove invalidity based on public use, an 

accused infringer must prove by clear and convincing evidence that "(l) the 

invention was used in public and (2) the use was not primarily experimental in 

purpose." Allied Colloids lnc. 1,. Amer. Cyanamid Co., 64 F.3d 1570, 1574 fFed. 

Cir. 1995). 

If the accused infringer presents a primafacie case of a commercial sale, 

offer to sell, or a public use, "the patentee must simply produce sufficient rebuttal 

-A0375- 

OPPOSITION TO 1)I'2FENI)AN'I"S MOTION FOR 

l 1 SUMMARY JUDGMENT 


Cas_ 2:10-cv-07678-J FW -DTB 

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evidence to prevent the party challenging the patent's validity from meeting its 

burden of proving by clear and convincing evidence that the invention was in public 

use" or on sale. See Lisle Corp., 398 F.3d at 1316 (addressing evidence required to 

establish invalidity based on public use). Evidence that the public use or sale of the 

patented device was primarily experimental negates invalidity under § 102(b). See, 

e.g., Monon Corp., 239 F.3d 1258; Armco, Inc. v. Cyclops Corp., 791 F.2d 147, 150 

(Fed. Cir. 1986) (reversing district court's grant of SUlmnary judgment of invalidity 

because the district court failed to credit evidence that "provisions were made for 

reporting back to [the patentee] the results of testing and that modifications made to 

the alloy by Annco were based on these reports"). 

2. The Experimental Use Doctrine Is Applicable After An 

Invention Has Been Reduced To Practice 

h_ arguing that "there can be no experimental use exception" once ml 

invention has been reduced to practice, Nanoptix inco_Tectly seeks to conflate the 

two separate conditions set forth in PJbJ.]: (Dkt. No. 55 at 8.) The fact that an 

invention has been reduced to practice does not determine that a sale, offer for sale, 

or public use "was commercial rather thau experimental in nature." See 525 U.S. at 

67. As explained by the very anthority cited by Nanoptix, the two-pronged test 

announced in Pfaffeliminated any rule that may have existed in certain pre-PfaJ.'f 

cases that experimental use cannot be shown after reduction to practice. See 

Atlanta Attachment Co. v. Leggett & Plait; lnc., 516 F.3d 1361, 1368 (Fed. Cir. 

2008) (Prost, J. and Dyk, J. concurring) ("lffi_ffindicates that the experimental use 

doctrine should apply more broadly than the limited period suggested by a 

reduction to practice cutoff."). Nanoptix's reliance on dicta contained in post-Pfq/f 

cases that repeat the pre-Pfqfflanguage is misplaced. See id at 1368-69. 

The viability of the experimental use doctrine after reduction to practice is 

confirmed by several recent Federal Circuit decisions. For exeanple, in Eli-Lilly 

And Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369 (Fed. Cir. 2006), the court 

-A0376- 

OPPOSrI7ON TO I)EI,'I_.NDAN'I"S MOTION FOR 

12 SUMMARYJUDGMENT 

CV IO-07678-JFW (DTBX) 

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found that the patent holder's clinical trials of the patented compositions were not a 

public use because they were experimental use "that negated any section 102 bar." 

Id. at 1380-81.. The experimental use doctrine was applicable despite the fact that 

the invention had clearly been reduced to practice before the clinical trials of the 

claimed substance in humans--a composition is reduced to practice "when it is 

completely composed." Pfaff,, 525 U.S. at 57 fn. 2 (quoting Corona Cord Tire Co. 

v. Dovan Chemical C_rp., 276 U.S. 358, 383 (1928)). Similarly, in In re 

Mahurkar, supra, the Federal Circuit found that a pre-critical date sale of two 

prototypes was not an invalidating § 102(b) sale "even though the prototype was a 

reduction to practice" because the sale was not a commercialization of the patented 

catheters. 71 F.3d at 1576. 

Under Nanoptix's view, the experimental use doctrine would be virtually 

eliminated because one generally cannot test an invention unless it has been built 

(and ma invention that has been built would be deemed ready for patenting or 

reduced to practice under the second prong of the Pfafftest). "Because an invention 

is complete when it is either ready for patenting or reduced to practice, the 

experimental, use doctrine must remain available after that stage." See Atlanta 

Attachment Co., 516 F.3d at 1369 (Prost, J. and Dyk, J. concurring). 

B. Prototype Sales_ Offers To Sell_ And Testing That Occurred 

During l'he Coca-Cola Printer Development Proiect Were 

Primaril v For Experimental Purposes 

Mark and Eric Meyerhofer, both of whom were personally involved in 

FutureLogic's printer development project with Coca-Cola, have declared that the 

prototype printers were provided to Coca-Cola to determine whether they would 

work reliably for their intended purpose under conditions of actual use. (Facts, 

129-130.) Coca-Cola engineer Mr. Ahluwalia confirmed that the printer prototypes 

provided by FutureLogic to Coca-Cola "were used for experimental purposes" and 

were "never commercialized." (S. Ahluwalia Decl. 4.) Contemporaneous 

documents establish that Coca-Cola and FutureLogic worked closely together to 

-A0377- 

OPPOSr['ION TO ])EIqT.NI)AN'i'_S MOTION FOR 




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determine whether the prototype primers would reliably perform their intended 

functions in a vending machine placed in the field--including, for example, 

receiving coupon data for printing coupons, printing coupons, and receiving data 

fiom the vending controller under conditions of varying power supply, varying 

humidity, customer abuse, and operator error. (Facts, 129-130.) It is well 

settled that where testing is required to determine that an invention will work in its 

intended environment, such testing (and prototype sales incident to such testing) do 

not place an invention "on sale" or in "public use" within file meaning of Section 

102(b). See Kolmes v. World Fibers" Corp,, 107 F.3d 1534 (Fed. Cir. 1997) (pre- 

critical date testing of meat packing gloves in a meat packing plant was not public 

use or on sale bar because "[a]n inherent feature of Kolmes' invention was 

durability, the ability to withstand use in an environment such as a meat-packing 

plant"); Morion, 239 F.3d at 1259 (finding a genuine issue of fact whether tbe sale 

of a trailer constituted a commercial sale because, as the patentee's chief engineer 

testified, "'it [would have been] necessary to test it in its real working enviromnent 

to make sure that it would work."). 

Nanoptix has not offered any evidence--let alone clear and convincing 

evidence--to support a finding that the alleged sale, offers to sell, and use of the 

prototype printers were primarily commercial rather than experimental. Nanoptix 

incorrectly asserts that these activities were not experimental because "[n]either 

Coca-Cola nor its customers had any obligation of secrecy," and (2) "FutureLogic 

had no control or involvement in the prototype field testing in which the printers 

were freely available for us[e] [sic]." (Dkt. No. 55 at 9.) In addition, Nanoptix 

asserts the fact that FutureLogic received payment for the prototypes establishes 

that the sales were commercial in nature. (Dkt. No. 55 at 7.) As explained in detail 

below, each of Nanoptix's arguments is factually and legally incorrect. 

-A0378- 

14 

Ol 3POSH'ION 

TO I)I);FI_.NI)ANT'S MOTION FOR 


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l. All Parties Involved In The Development Project Treated 

Information Regarding FutureLogic's Invention As 

Confidential 

First, the evidence demonstrates that Coca-Cola was under an obligation of 

confidentiality to FutureLogic. The "PSA-VM-66 Communications Protocol," 

which describes how the prototype printer communicated with a machine controller 

and promotional controller to perform its intended functions, was clearly designated 

"CONFIDENTIAL and PROPRIETARY.;' (Facts, 167.) Coca-Cola's engineer 

responsible for the project testified that information exchanged among FutureLogic, 

Inc. and Coca-Cola was "treated as confidential by all parties" and that he 

maintained FutureLogic's technical information as confidential "as did others at 

The Coca-Cola Company." (Facts, 1 126.) In addition, both Mark and Eric 

Meyerhofer have testified that they provided printers and information regarding the 

printers to Coca-Cola subject to an understanding that such material would be kept 

confidential. ( Facts, 11 127-128.) Interleave Systems, the third party who 

introduced FutureLogic and Coca-Cola, considered itself snbject to a confidentiality 

agreement and treated FutureLogic's information as confidential. (Facts, 11 63-65.) 

Lastly, a letter from Coca-Cola to FutureLogic proposed an agreement that would 

have memorialized both parties' understanding that information exchanged during 

the development project was to be kept confidential. (Facts, 1 66.) 

This evidence of a confidentiality obligation between Coca-Cola and 

FutureLogic is more than sufficient to withstand Nanoptix's motion for summary 

judgment. In Armco, Inc., the Federal Circuit reversed a district court's decision to 

grant summary judgment of public use and on sale bar because the district court 

igaaored evidence that "as a matter of general practice [the patent owner's] research 

department would not have shipped the alloy to NAA unless it was certain that the 

material would be kept confidential?' 791 F.3d at 150 (noting that there is "no 

requirement of a formal pledge of confidentiality"); see also Moleculon Res. Corp. 

v. CBS, Inc., 793 F.2d 1261, 1266 (Fed. Cir. 1986) ("the presence or absence of [an 

-A0379- 

OPPOSITION TO DEI;ENI)AN'["S MOTION FOR 

] 5 SUMMARY JU/X_MENT 



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express] confidentiality agreement is not determinative of the public use issue"). 

In this case, not only have both Coca-Cola and FutureLogic witnesses 

testified that FutureLogic's technical information was treated as confidential, 

FutureLogic produced an important technical specification containing a 

confidentiality provision and a proposed letter agreement from Coca-Cola 

containing a confidentiality provision. The evidence that Coca-Cola was obligated 

to keep, and did keep, information regarding FutureLogic's patented printers 

confidential is vastly more compelling than the evidence found sufficient to 

withstand summary judgment in Armco. See id Notably, there is no evidence that 

any information of a confidential nature concerning FutureLogic's invention was 

communicated to any member of the public. See Allied Colloids Inc., 64 F.3d at 

1576 ("the absence of [a v_itten promise of confidentiality] does not make a use 

'public' ... or outweigh the undisputed fact that no information of a confidential 

nature was communicated to others"). 

Second, information of a confidential nature concerning the operation of 

FutureLogic's prototype printers was never accessible to the public at any time 

during flae field trials, lit is undisputed that the prototype printers, when installed in 

vending machines for field trials in Cincinnati, were located in a locked 

compartment inaccessible even to the route operators tasked with refilling sodas in 

the machines. (Facts, 96.) No Coca-Cola customer or other member of the 

public could have observed the operation of the printer or determine how it 

communicated with either a machine controller or a promotional controller. (Id.) 

FutureLogic's coupon template system and communication protocol, both of which 

are important aspects of the '855 Patent invention, could not have been discovered 

by any member of the public or even a Coca-Cola technician. (Id.) In these 

circumstances, the on sale and public use bars do not apply. See In re Mahurkar, 

71 F.3d at 1577 (transaction was not a "102(b) sale" because it "did not place the 

invention in the public domain"). 

-A0380- 

OPPOSITION TO 13EFENI)ANT'S MOTION FOR 


CV 10-07678-JFW (DTBX) 

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2. FutureLogic Closely Monitored Testing Of The Prototype 

Printers And Made Modifications As A Result Of Such 

Testing 

The evidence demonstrates that FutureLogic was closely involved in testing 

the prototype printers, received regular reports regarding the results of the testing, 

and made modifications in response to information learned through testing. (Facts, 

97-111 .) The evidence further shows that before the field trials, FutureLogic 

engineers--including Eric Meyerhofer and Scott Sbimmin--worked with Coca- 

Cola to develop a set of procedures for testing the prototype printers in vending 

machines. (Facts, 91-93.) The evidence also establishes that Mr. Shimmin, an 

employee of FutttreLogic, helped install prototypes in vending machines at the 

commencement of the field trials and trained CCE personnel in how to operate the 

printers. (Facts, 94-95.) This evidence demonstrates that FutureLogic was 

closely involved in testing of the invention and received and acted on regular 

feedback from Coca-Cola and CCE personnel. 

Importantly, FutureLogic prepared a questionnaire for use by Coca-Cola 

representatives to report any problems with the prototypes in the field. (Facts, 

98.) In addition, Mr. Ahluwalia, a Coca-Cola representative, frequently reported 

information concerning the status of the field tests to Mark Meyerhofer, Eric 

Meyerhofer, and Scott Shimmin. (Facts, 99-107.) As a result of such reporting, 

FutureLogic made several modifications and improvements to the prototype 

printers and the coupon data used with its printers. (Facts, 116.) These 

modifications directly impacted claimed elements of the printer--such as the ability 

to receive coupon data and print a coupon using that data and the ability to receive 

voucher data flom the machine controller. (ld.) 

The evidence showing FutureLogic's involvement in the testing of the 

prototype printers and modifications in response to the result of the testing is more 

than sufficient to establish that the alleged sale, offers to sell, and public use of file 

prototype printers was conducted primarily for experimental purposes. In Armco, 

-A0381 - 

OPI_DsrfION TO ])EFENDANT'S MOTION FOR 

1 7 SUMMARY JUDGMENT 

C V 10-07678-JFW (DTBX)


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791 F.2d at 150, flae court found stRfficient evidence to demonstrate an isstie of 

material fact concerning whether a third party's testing of the patented invention 

was experimental where there was evidence the patentee made "provisions ... for 

reporting back to [the patentee] the results of the testing and that modifications 

made to the alloy by [the patentee] were based on these reports." Id. Here, 

FutureLogic created a detailed form for Coca-Cola to report the results of the 

testing and Coca-Cola regularly reported such test results. (Facts, 99.) 

The fact that FutureLogic's potential customer, Coca-Cola, participated in 

testing the prototype printers does not support Nanoptix's arguments flaat the 

testing, sale, and offers to sell were commercial rather than experimental. In 

Continental Can Company USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 

1991), which involved joint testing between a patentee and its customer, the Federal 

Circuit reversed a district court's grant of summary judgqnent of invalidity based on 

an on sale bar. Id. at 1269. h_ that case, the district court granted summary 

judgment of invalidity under § 102(b) based on an agreement between Admiral 

PlasticsIthe inventor's employer--and Coca-Cola to develop a suitable plastic 

bottle, ld. "The agreements provided that Admiral Plastics would make and Coca- 

Cola would test the bottles, and that if a satisfactory bottle was developed it would 

be manufactured by Admiral and purchased by Coca-Cola." Id. Although 

minimum and maxhnum prices were stated in an agreement and costs were 

discussed, the Court found that § 102(b) did not apply. Id. ("[Y]he on sale bar of 

§ 102(b) does not arise simply because the intended customer was participating in 

development and testing."). As file court observed, although Admiral Plastics' 

hope was surely commercial sales, this hope was insufficient to convert an 

experimental use to a commercial one. The court further noted that "[t]he 

[patented] bottle was part of a terminated development project that never bore 

commercial fruit and was cloaked in confidentiality." Id. 

Similarly, the fact that FutureLogic's potential customer, Coca-Cola, 

-A0382- 

OPPOSITION TO ])EFENI)AN'F'S MOTION FOR 

1 8 SUMMARY JUDGMEI'-,FF 

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conducted some of the actual testing of FutureLogic's prototype printers and the 

fact that FutureLogic hoped to ultimately commercialize its invention do not 

convert a primarily experimental use into a commercial one. Like the transaction in 

Continental Can, the printer development project was terminated before it was ever 

commercialized and information concendng FutureLogic's invention was 

maintained as confidential by all involved parties. (Facts, 1 l 5.) 

Nanoptix cites A tlanta Attachment Co., 515 F.3d at 1366, in support of its 

on-sale bar and public use arguments. (Dkt. No. 55 at 9.) In Atlanta Attachment, 

the court found that the customer's use of the invention was not experimental in 

part because there was no evidence that the inventor established a system for testing 

the invention and reporting to the patentee, as was done by FutureLogic in this case. 

ld. at 1363. In addition, unlike in this case, the refinements or modifications made 

by the patentee did not affect claimed features or to problems that prevented the 

workability of the invention, ld. at 1367. Here, FutureLogic and Coca-Cola 

worked together to resolve several issues that related to the printers' workability, 

durability, and claimed features such as the ability to communicate with the 

vending machine and the ability to print coupons. (See, e.g., FL0021208 

(FutureLogic redesigning paper path to prevent paper jam problem that occurred 

during field trials); FL0002930 (discussing planned fixes to resolve failure to load 

coupon data); FL00039 l 0 (discussing development of database for coupon data); 

FL0003906 (discussing problems in communication between vending controller 

and printer). 

3. Coca-Cola's Payment To FutureLogic For Protoyoes Does 

Not Demonstrate Commercial Sales, Offers To Sell, Or 

Public Use 

Contrary to Nanoptix's assertions, the fact that a patentee receives payment 

for samples to be tested does not demonstrate that an invalidating sale was made. 

Armco, lnc., 791 F.2d at 151. As noted above, in order for FutureLogic and Coca- 

Cola to determine whether the prototype printers could be reliably used for their 

-A0383- 

OI_POSITION TO I)EH_NI)ANT'S MOTION FOR 




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intended purpose under conditions of actual use, it was necessary to conduct field 

trials of those printers. (Facts, 129-134.) FutureLogic was a small company that 

could not reasonably afford to take on a large development and testing project 

without any income during the course of that project. (Facts, 89.) Accordingly, 

Coca-Cola and FutureLogdc agTeed to share the costs of developing prototypes and 

testing those prototypes. (Facts, 88.) FutureLogic did not earn any profit from 

the small number of prototypes provided to Coca-Cola. (Facts, 88.) 

The fact that a patent owner did not profit from the allegedly invalidating 

sale is a factor in detennining whether the sale was for commercial or experimental 

purposes. In Monon, the Federal Circuit reversed a district court decision granting 

summary judgment that the sale of a trailer created an on sale bar. 239 F.3d at 

1260. Although the patent owner received payment for the trailer, the court was 

persuaded by evidence that file patent owner's customer "was charged only for the 

cost of building the trailer and ... did not profit from the sale of the test trailer." ld. 

at 1260. 

As noted, FutureLogic was a small company in 1997-2000 that cotdd not 

afford to proceed with a large development project without receiving any income. 

Under similar circumstances, the Federal Circuit has found that payments made to 

acquire sample products were incidental to the experimental purpose and did not 

render the transaction a commercial offer for sale. See Armco, 791 F.2d at 151 

(finding that sales of alloys were not invalidating under Section 102(b), in part 

because payments for samples were customary in the industry and because Annco 

could not afford to filrnish free samples). 

The fact that FutureLogic and Coca-Cola exchanged quotations, purchase 

orders, and invoices in connection with FutureLogic's delivery of prototype printers 

to Coca-Cola does not signify that the transaction was for commercial purposes. 

Where the evidence suggests that "sales authorization and purchase orders were 

issued as a regular business practice even during the course of experimentation," 

-A0384- 

OPPOSITION TO 1)EFIIr.NDAN'r's MOTION FOR 


CV 10-07678-JFW (DTBX) 

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2:10-cv-O7678-JFW-DTB Document 65 Filed 10/07/11 Page25 of 26 Page ID 

#:1276 

such documents do not demonstrate commercial intent. See Armco, 791 F.2d at 

150. In this case, there is evidence that the quotations, purchase orders, and 

invoices were issued as a matter of course unrelated to any commercial intent. 

(Facts, 87.) 

C. The Quotations Dated April 25_ 11999, And October 18_ 1999, Were 

Not Offers To Sell Printers That Embodied The '855 Patent 

The first prong of the Pfafftest is not met with respect to the alleged offers to 

sell because, as noted above, the alleged offers were made for experimental rather 

than commercial purposes. 

Under the second prong of the Pfafftest, an accused infringer lntist also show 

that the offer to sell was of a product that was "ready for patenting" mad that it met 

all the limitations of the patent claim. P/b[]; 525 U.S. at 67. Thus, to prove 

invalidity based on an offer to sell, "the accused infringer must prove by clear and 

convincing evidence that there was a definite ... offer to sell more than one year 

before the application for the subject patent, and that the subject matter of the... 

offer to sell fully anticipated the claimed invention." In re Mahurkar, 71 F.3d at 

1576 (emphasis added). Nanoptix has offered no evidence--let alone clear and 

convincing evidence--that the printer models allegedly offered for sale on April 25 

and October 18, 1999, were ready for patenting or that they anticipated any claims 

of the '855 Patent. As noted above, the printer models identified in the product 

quotations sent to Coca-Cola on April 25 and October 1.8, 1999, were never 

constructed. (Facts, 73-81.) 

Nanoptix asserts that the 1997 printer specification drafted by Interleave 

Systems describes a printer that embodied the claims. (Dkt. No, 55 at 4, citing 

Rounds Exhibit 9.) As noted above, Nanoptix's assertion is incorrect because the 

1997 specification describes a printer that has only one active port to receive data 

for printing. (Facts, 56.) In addition, throughout the course of the development 

project, FutureLogic and Coca-Cola contemplated various options that would not 

-A0385- 

OPPOSITI'[ON TO DEFENDANT'S MOT1ON FOR 


CV 10--07678-JFW (DTBX)

Cas_ 2:10-cv-07678-J FW -DTB 

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have embodied the '855 Patent, including a pre-printed coupon dispenser and a 

single port printer. (Facts, 70-72.) 


Nanoptix's motion for summmay j udgnnent should be denied because the 

evidence raises at least a genuine issue of material fact that FutureLogic's alleged 

sale, offers to sell, and public use of the printers developed with Coca-Cola were 

made for experimental purposes. Nanoptix's motion for summary judgment should 

be denied for the additional reason that the alleged offers for sale identified printers 

that were never built and Nanoptix has not proven by clear and convincing evidence 

that the offers related to a printer that embodies the '855 Patent. 

DATED: October 7, 2011 BRETT J. WILLIAMSON 


O MELVEN .... y &MYERS LLP 

-A0386- 

By:/s/Brett J. Williamson 




22 

OPPOSITION TO I)EI"I_NDAN'['_S MOTION FOR 

SUMMARY JIJDGMENT 

CV 10-07678-JFW (DTBX) 

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Document 65-1 Filed 10/07/11 

#:1278 


bwilliamson@omm.coln 

MICHAEL IMYERS (S.B. #240652) 

mmyers@omm.com 




Telephone: (949) 760-9600 

Facsimile: (949) 823-6994 




Corporation, 

V. 



Plaintift. 


Corporation, 

Defendant. 


Page 1 of 36 


Page ID 

PLAINTIFF FUTURELOGIC, 

INC.'S STATEMENT OF GENUINE 

ISSUES OF MATERIAL FACT IN 

OPPOSITION TO NANOPTIX, 

INC. S MOTION FOR SUMMARY 

JUDGMENT 

Hearing Date: October 31,2011 

Time: -] :30 p.m. 

Place: Courtroom 16 


PlaintiffFutureLogic, Inc. ("FutureLogic") hereby submits this Statement of 

Genuine Issues of Material Fact in Opposition to Nanoptix, Inc.'s Motion for 

Summary Judgment pursuant to Central District of California Local Rule 56-2 and 

this Court's Revised Scheduling Order. (Dkt. No. 38.) 

-A0387- 

FXJTUREI.OGIC'S STMT OF ISSUES OF IvIA'I'ERIAL FACT [N 

OPP TO NANOI:q'IX'S MOTION 

2:10-CV-07678-JF'W-DTB


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Nanoptix's Alleged Uncontroverted Response in Opposition 

Facts 

1. Plaintiff Futurelogic, Inc. 

("Futurelogic") currently asserts that 

Defendant Nanoptix, inc. ("Nanoptix') 

infringes claims I-6, 36-38,71-76, 78, 

79, 83 and 84 of U.S. Patent No. 

7,594,855 ("'855 Patent".) (the "Asserted 

Claims"). The '855 Patent allegedly 

covers a promotional printer that prints 

vouchers and coupons for gaming 

customers, such as bar-coded redemption 

tickets and coupons for buffets. 

2. Among other limitations, 

independent claims 1, 36 and 71 of file 

'855 Patent claim a promotional printer 

with a main communication port for 

receiving voucher data and an auxiliary 

communication port for receiving 

coupon data. 

-A0388- 

-2- 

Rounds Decl. 2, Exhibit 1 at pp 1:25- 

2:12. 

Rounds Decl. 3, Exhibit 2 at Col. 1:4i6, 

38-56, Cols. 1:64-2:3, and Figure 3. 

Undisputed as to asserted claims. 

Disputed as to the '855 Patent's 

coverage. Not all printers that print bar- 

coded redemption tickets and coupons 

are covered by the '855 Patent. 

See Stubben Dep. Tr. 33:17-34:18, 

101:9-102:8. 

Rounds Decl. 3, Exhibit 2 at claims 1, 

36 and 71; Rounds Decl., 4, Exhibit 3 

at p. 25, 3. 

Disputed as to the interpretation of the 

'855 Patent's claims. The independent 

claims 1,36 and 71 of the '855 Patent 

claim a promotional printer with a main 

communication port "adapted to 

receive" voucher data and an auxiliary 

communication port "adapted to 

receive" coupon data. See Rotmds 

Decl. 3, Exhibit 2 at claims 1, 36 and 

71 

F[Y[UREI.OG K."S S']NIT OF ISSUES OF MATERIAL FACT IN 

OPP TO NANOPTIX'8 MOTION 

2; I0-CV-0767 g-JFW-DTB 

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#: 1280 


Facts 

3. The inventor of the '855 Patent, 

Mark Meyerhofer, testified that this 

"dual port" feature of independent claim 

1 was what was different from the 

FutureLogic printers he had worked on 

previously. 

4. Mr. Meyerhofer is the Co-Chief 

Technology Officer of FutureLogic, its 

former President and FutureLogic's 

30(b)(6) witness on topic numbers 1 and 

2 (conception) of Nanoptix's 30(b)(6) 

Deposition Notice. 

-A0389- 

-3- 

Rounds Decl. 22, Meyeflaofer Tr. 

31:19-32:3. 

Disputed to the extent it suggests the 

"dual port!' feature was the only 

difference. Mark Meyerhofer also 

testified "I believe that Claim 1 and 

subsequent claims to fllat really describe 

a printer that is different in how it 

operates than those that were in the 

market at the time that we conceived the 

product. They had different control 

features on how printing was 

established, and so we believed it was 

different in that regard than the printers 

that we were aware of 

on the market." 

See Rounds Decl. 22, Meyerhofer Tr. 

31 :l 1-32:18. 

Rounds Decl. 5, Exhibit 4; Rounds 

Decl. 22, Meyerhofer Tr. 16:13-17:13, 

184:9-185:23. 

Disputed to the extent it suggests Mark 

Meyerhofer was FutureLogic's 30(b)(6) 

witness on topic 2 for any issue other 

than conception of the claimed 

inventions. 

FLrFURELOG IC'S S'I_IT OF ISSUES OF MATERIAL FACT IN 

OPP TO NANOPTIX'S .MOT[O 1_ 

2:10-CV-07678-JFW-DTB

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#:1281 


Facts 

5. During the prosecution of the '855 

Patent, the United States Patent and 

Trademark Office ("PTO") rejected all 

of file pending claims of the '855 

application in its first office action dated 

March 21, 2007. 

6. The March 21, 2007 rejection was 

based upon the Rowe '320 patent and, in 

some instances, a combination of the 

Rowe '320 patent and other prior art. 

7. Future Logic responded to the 

March 21st rejection on July 23, 2007. 

In both the interview summary and the 

response, FutureLogic emphasized the 

dual port aspect of its alleged invention. 

8. On October 16, 2007, the PTO 

finally rejected all claims of the '855 

Patent application. In this second 

rejection, the PTO relied upon the Rowe 

'320 patent and the Rowe '527 published 

application and, in some instances, 

combined the Rowe references with 

other prior art. 

-A0390- 

-4- 

Rounds Decl. 1 4, Exhibit 3 at p. 92. 

Undisputed. 

Rounds Decl. 1 4, Exhibit 3, at pp. 93- 

96, 11 5-7, 9. 

Undisputed. 

Rotmds Decl. 1 4, Exlfibit 3 at pp. 86- 

91. 

Disputed. FutureLogic stated, for 

example, flint "Applicant's main 

communication port couples a 

promotional ginning printer to a gaming 

machine controller and a separate 

auxiliary communication port couples 

the gaming promotional printer to a 

promotional controller." The phrase 

"dual port aspect" is not used. 

See Rounds Decl. 1 4, Exhibit 3 at pp. 

86-91. 

Rounds Decl. 1 4, Exhibit 3 at pp. 80- 

85. 

Undisputed 

[:IJTUREI,OGIC'S S] ,'MT OF ISSUES OF MA'I:C.RIAL FACT IN 

OPP TO NANOPTIX'S MOTION 

2: I 0-CV-07678-JFW-DTB 

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Facts 

9. On February 28, 2008, 

FutureLogic responded to the PTO's 

October 16, 2007 final office action. In 

its response, FutureLogic filed the 

Declaration of Mark Meyerhofer to 

antedate the Rowe '320 patent and the 

Rowe '527 published application. 

10. Mr. Meyerhofer stated that "the 

claimed invention of the '855 patent was 

actually redticed to practice in the United 

States of America before Jtdy 10, 2001 

which is the earliest effective date of 

Rowe'320 and Rowe '527." 

11. In paragraphs 6 tol 6 of his 

declaration, Mr. Meyerhofer described 

the promotional printer that met the 

elements of the claimed invention. The 

exhibits attached to Mr. Meyerhofer's 

declaration depict the promotional 

printer. 

12. The promotional printer described 

in Mr. Meyerhofer's declaration was the 

PSA-66-VM printer ("VM printer") 

which was provided to Coca-Cola. 

13. On May 13, 2008, the PTO again 

rejected all claims of the '855 Patent 

application. In this third rejection, the 

PTO rejected the claims based upon the 

Rowe '065 published application and the 

Nichols '241 patent and, in some 

instances, other prior art. 

-5- 

-A0391 - 

Rounds Decl. 4, Exhibit 3 at pp. 65- 

79. 

Undisputed. 

Rounds Decl. 4, Exhibit 3 at p. 67, 

5. 

Undisputed. 


79; Rounds Decl. 6, Exhibit 5. 

Undisputed. 

Rounds Decl. 22, Meyerhofer Tr. 

36:21-37:23, 44:8-22. 

Undisputed. 

Rounds Decl. 4, Exhibit 3 atpp. 61- 

64. 

Undisputed. 

F1JTURELOG IC'S STMT OF ISSUES {.IF MATFA_IAL FACT IN 


2: i 0-CV-07678 -JFW-DTB


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Document 65-1 Filed 10/07/11 Page6of36 Page ID 

#: 1283 


Facts 

14. On August 13, 2008, in response 

to the May 13, 2008 office action, 

FutttreLogic submitted another 

declaration of Mr. Meyerhofer to 

mltedate the Rowe '065 and Katz '901 

published applications. The second 

Meyerhofer declaration is identical to the 

first declaration except that it states as 

follows m paragraph 5: ...the claimed 

invention of the '855 patent was actually 

reduced to practice in the United States 

of America before December 19, 2000, 

which is the earliest effective date of 

Rowe '065 and Katz '901 ." 

15. The PTO issued a final office 

action oll December 3, 2008. In this 

office action, the PTO raised issues of 

whether the claimed invention described 

in Mr. Meyedlofer's declaration was 

either on sale or in public use under 35 

U.S.C. § 102(b). This was based upon 

the third page of Mr. Meyerhofer's 

declaration which stated "After being 

built, the promotional printer of was 

placed into operation and used for its 

intended purpose..." and the oral 

statement of his patent attorney that 

"FutureLogic has created products for 

use by other corporations." 

-6- 

-A0392- 


60; Rounds Decl. 4, Exhibit 3 at p. 39, 

5. 

Undisputed. 

Rounds Decl. 4, Exhibit 3 at, pp. 31- 

34. 

Undisputed. 

FUTUREI,OG [C'S S]_fl? OF ISEtJb]S OF MA'I'FAtlAL FACT IN 

l 

OPP TO NANOPTlX'S MOTION 

2:10-CV-07678-JFW-DTB 

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2:10-cv-O7678-JFW-DTB Document 65-1 Filed 10/07/il Page 7 of 36 Page ID 

#:1284 

Nanop_'s Alleged Uncontroverted Response in Opposition 

Facts 

16. In its December 3rd office action, 

the PTO stated: "In the case of the facts 

revealing that the invention was involved 

in "public use" or "on sale" activities, the 

35 U.S.C. § 102(b) rejections based upon 

a public use or sale of the invention will 

be maintained. If the facts reveal 

otherwise, the rejection will be 

withdrawn." 

17. On June 3, 2009, FutureLogic 

responded to the December 3rd office 

action. 

18. In the June 3rd response, 

FutureLogic stated the following: 

"... Applicant submits herewith but tinder 

separate letter, a Supplemental 

Declaration under 37 C.F.R. § 1.13i in 

order to further clarify file circumstances 

under which flae promotional printer 

described in Applicant's two previous 

Declarations under 37 C.F.R. 1.131 

dated February II, 2008 and August 12, 

I2008, was reduced to practice." 

-7- 

-A0393- 

Rounds Decl. 4, Exhibit 3 at p. 34. 

Undisputed as to the statement itself, 

but misleading. See inJi'a, 25. 


30. 

Undisputed. 


Undisputed 

FtJTUREI.OG ICeS s I,_fl7 OF ISSUES OF MATFJIlAL FACT I:N 

OPP TO NANOP FIX'8 MOTION 

2; 1¢1-CV- 0767 g-J FW-D'I28

Case 2:10-cv-07678,J FW -DTB 

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Document 65-1 

#: 1285 



Facts 

19. In tile June 3rd response, 

FutureLogic further stated the following: 

"Furtherlnore, and in accordance with 

Applicant's understanding of tile 

rejection under 35 U.S.C. § 102(b), 

Applicant respectfully requests that the 

Examiner consider the additional 

information supplied in the Supplemental 

Declaration. Based on that additional 

information, Applicant submits that the 

present invention was neither made 

accessible to the public, nor used 

commercially, nor offered for sale or 

sold, before the critical date of March 29, 

2001. Accordingly, Applicant 

respectfully requests consideration and 

withdrawal of the rejection under 35 

U.S.C. § 102(b)." 

20. The '855 Patent claims priority to 

U.S. Provisional Application No. 

60/369,097, which was filed on March 

29, 2002. The critical date is therefore 

March 29, 2001 and on sale or public use 

activity prior to that date invalidates the 

patent trader 35. U.S.C. § 102(b). 

21. On June 26, 2009, FutureLogic 

filed Mr. Meyerhofer's third declaration 

signed by him on June 1, 2009, 

indicating that the submission, was 

"inadvertently delayed." FutureLogic 

further indicated that "The contents and 

sufficiency of the supplemental 

declaration were discussed with the 

Examiner in a telephonic interview prior 

to the submission of the previous 

response dated June 3, 2009." 

-A0394- 

-8- 

Rounds Decl. 4, Exliibit 3 at p. 29. 

Undisputed. 

Rounds Decl. 3, Exhibit 2 at p. 3; 

Ronnds Decl. 4, Exhibit 3 at p. 29; 35 

u.s.c, ,_]02(b). 

Undisputed. 


Undisputed. 

FU'FISRt_A ,OG [C'S SFMT OF IS S[JES OF MATI_;R1AI. FAC[" IN 


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#:1286 


Facts 

22. In his third declaration, Mr. 

Meyerhofer stated in paragraph 6 that 

Future Logic and the soft drink 

manufacturer (Coca-Cola) "... shared the 

costs of the project which resulted in 

payments to FutureLogic to cover a part, 

of the costs." Mr. Meyerhofer also 

stated that "FutureLogic and the soft 

drink manufacturer were subject to a 

mutual non-disclosure agreement 

regarding the project." 

23. In paragraph 7 of his third 

declaration, Mr. Meyerhofer stated that 

"... a number of prototype promotional 

printers having the features of the 

invention were constructed by 

FutureLogic for experimental use during 

the period of the project." 

24. In paragraph 8 of his declaration, 

Mr. Meyerhofer stated that "During the 

operational period, the prototype 

promotional printers were only 

accessible by the technical personnel of 

FutureLogic and the soft drink 

manufacturer and were not accessible by 

the public." 

25. On June 25, 2009, the PTO issued 

a Notice of Allowance and withdrew its 

35 U.S.C. § 102(b) rejection based upon 

FutureLogic's June 3rd representations. 

26. As of March 7, 1997, FutureLogic 

was in discussions with Interleave 

Systems to develop a printer for Coca- 

Cola. 

-A0395- 

-9- 


Undisputed. 


Un disputed. 

Rounds Dec1. 4, E,_fibit 3 at p. 24. 

Undisputed. 


Undisputed. 

Rounds Decl. 7, Exhibit 6; Rounds 

Decl. 22, Meyerhofer Tr. 105:21-24. 

Undisputed. 

FI/TURELOG[C'S S'I_'MT OF ISSUES £)F MATERIAl. FACT IN 


2:10-CV-07678-JFW-DTB

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#:1287 


Facts 

27. On March 20 and March 31, 1997, 

FutureLogic signed two Non-Disclosure 

agreements with Coca-Cola. Neither 

agqeement imposed any confidentiality 

obligations upon Coca-Cola. 

28. An Interleave Systems' printer 

specification dated April 17, 1997 

discloses a printer having two ports: 1) 

an RS232 port supporting programming 

and creation of coupons; and 2) an MDB 

port complying with Coca-Cola's 

"'Electronic Vending Standard, Revision 

1 Draft - Peripheral Communication." 

29. Interleave eventually "bowed out" 

of the Coca-Cola project. 

-A0396- 

- 10 - 

Rounds Decl. 8-9, Exhibits 7 and 8. 

Undisputed as to the fact that the two 

documents were signed, and that they 

do not explicitly impose nondisclosure 

obligations on Coca-Cola. 

Disputed to the extent it suggests Coca- 

Cola was not subject to a nondisclosure 

agreement. Coca-Cola was obligated to 

maintain, and did maintain, 

FutureLogic's information as 

confidential. See inJba, 126-128. 


19; Rounds Decl. 22, Meyerhofer Tr. 

109:17-110:16. 

Disputed. While the printer 

specification discloses a printer with 

two physical corn m uni cation ports, an 

RS232 port mad an MDB port, it also 

discloses that only one of the two ports 

was capable of receiving data at one 

time. See Rounds Decl., Exhibit 9 at p. 

2 l ; see also E. Meyerhofer Decl. 8. 

Rounds Decl. 22, Meyedlofer Tr. 

107:19-108:1. 

Disputed. Interleave remained involved 

in the FutureLogic's co-development 

project with Coca-Cola. Coca-Cola 

decided not to commercialize the 

printers FutureLogic developed for 

Coca-Cola vending lnachines. See Oct. 

6. 2011 Ahluwalia Decl. 4.) 

F[/'FUREI,OGIC'S S] .'.'MT OF ISSUES OF MA'INRIAI, FACT 1N 


2: IO-CV-O76711-JFW-DTB 

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#:1288 

NanoptLx's Alleged Uncontroverted Response in Opposition 

Facts 

30. FutureLogic avers in an 

interrogatory response that the invention 

of the '855 Patent was conceived by 

September 3, ! 997, and was reduced to 

practice by January 21, 1998. 

31. On or about April 25, 1999, 

FutureLogic sent a letter to Coca-Cola 

that provided qnotes to Coca-Cola for a 

"CCUSA" printer, describing it as a 

"highly customized printer." The letter 

states: "What is proposed is a true 

product price; [there] have been 11o 

omissions which can lead to product tip 

charges after the award of the contract." 

-A0397- 

-11- 

Rounds Decl. 1 I, Exhibit 10 at p. 131. 

Disputed to the extent it suggests any 

printer for Coca-Cola was conceived or 

reduced to practice on the cited dates. 

The printer that embodied the prototype 

of the '855 Patent as of January 21, 

1998 was the Tokheim PMC 2010A 

printer, not the Coca-Cola PSA-66-VM 

printer. See E. Meyerhofer Decl. _ 2- 

5; see also infra 49-55. 

Rounds Decl. 12, Exhibit II at pp. 

135-36; Rounds Decl. 22, Meyerhofer 

Tr. 11.9:5-18. 

Disputed. The April 25, 1999 letter was 

sent to Coca-Cola to provide "ballpark 

printer pricing" to "make sure 

[FutureLogic and Coca-Cola] were 

converging on a solution [Coca-Cola] 

could affbrd." (M. Meyerhofer Tr. 

122:6-123:8.) At the time of the April 

25, 1999 Product Quotation, "there was 

no physical unit" that could have been 

sold to Coca-Cola. (M. Meyerhofer Yr. 

122:15-123:8.) In fact no KBCOK-66 

printer was ever built. (M. Meyerhofer 

Tr. 122:15-123:8.) 

F'I,3"FURELOGIC'S S'I ,_,1"17OF ISSUES OF MA'I_Z_IAL FACT IN 

OPP TO NANOPTIX'S .MOTION 

2:10-CV-07678-JFW-D'I]3

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#:1289 


Facts 

32. The April 25fll quote included 

prices for production units based upon 

quantity ($395 to $450) mad prices for 

two phases of prototypes ($17,500 and 

$850, respectively). 

33. In correspondence dated May 3, 

May 1.8, and June 15, 1999, FutureLogic, 

with Coca-Cola's input, made 

modifications to the printer power 

supply, printer width and packaging and 

paper width to reduce the cost of each 

printer at production. 

34. On July 16, 1999, Coca-Cola 

responded to FutureLogic's April 25th 

Order and ordered twenty-four CCUSA 

printers f?om FutureLogic. 

-A0398- 

-12- 

Rounds Decl. 12, Exhibit 11 at pp. 

137-38. 

Disputed. The April 25, 1999 letter was 

sent to Coca-Cola to provide "ballpark 

printer pricing" to "make sure 

[FutureLogic and Coca-Cola] were 

converging on a solution [Coca-Cola] 

could afford." (M. Meyerhofer Tr. 

122:6-123:8.) At the time of the April 

25, 1999 Product Quotation, "fllere was 

no physical unit" that could have been 

sold to Coca-Cola. (M. Meyerhofer Tr. 

122:15-123:8.) In fact no KBCOK-66 

printer was ever built. (M. Meyerhofer 

Tr. 122:15-123:8.) 

Rounds Decl. 13, Exhibits 12-14; 

Rotmds Decl. 22, Meyerhofer Tr. 

133:24-134:22. 

Disputed. The cited documents reflect 

"review of the proposed design" to 

determine the effect on cost under a 

hypothetical scenario. ("The cost 

reductions outlined are, for purposes of 

discussion, a comparison of effects of 

design choices.) See Rounds Decl. 13, 

Exhibits 12-14. 

Rounds Decl. 14, Exhibit 15; Rotmds 

Decl. 22, Meyerhofer Tr. 126:1- 

127:6. 

Disputed. The cited evidence does not 

show that Coca-Cola ordered twenty- 

four CCUSA printers or that it did so in 

response to an April 25 _hletter. 

FWFLrRELOGIC'S S'] _'MT OF ISSUES OF MATF.RIAL FACT LN 

OPP TO NANOPT1X'S MOTION 

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!:10-cv-O7678-JFW-DTB Document 65-1 Filed 10/07/11 Page 13 of 36 Page ID 

#: 1290 


Facts 

35. On or about October 18, ! 999, 

FutureLogic sent a letter and revised 

product quotation to Coca-Cola for the 

VM printer, also referred to as the 

"CCUSA" printer. 

36. The PSA-66-CC product 

designation in tile October 18th quote is 

an internal reference to the VM printer. 

-]3- 

-A0399- 


Disputed. The "VM" printer is not also 

referred to as the CCUSA printer. The 

cited exhibit refers to PSA-66-CC 

prototype printers, which were never 

built. (M. Meyerhofer Dep. Tr. 128:16- 

129:4.) 


1.32:20-133:18. 

Disputed. Mr. Meyerhofer testified that 

someone else "would not have caught 

the differentiation between the dash CC 

and the VM." M. Meyerhofer Dep. Tr. 

133:7-9. Mr. Meyerhofer stated that 

"once we got close to when they finally 

issued a P.O., which was still another 

month after this, at the time I believe we 

were locked down to a name ofa VM." 

(M. Meyerhofer Dep. Tr. at 133:10-13.) 

Mr. Meyeflaofer acknowledged that 

someone may have erroneously referred 

to VM as PSA-66-C. "Q. So the PSA- 

66-CC is referring to the VM unit, but 

somebody internally referred to it as 

PSA-66-CC; is that fair? A. I think 

that's what. it is." (M. Meyerhofer Dep. 

Tr. 133:15-18.) 

I,%,rI'URELOG ICes S 7_'MT OF ISSUES OF MATERIAL FAt.Y[" IN 


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#:1291 


Facts 

37. The VIM printer set forth in tile 

October 18th letter with price quotations 

is the same Coca-Cola printer referred to 

by Mr. Meyerhofer in his first and 

second declarations to the PTO. 

38. The October 18th letter from Mr. 

Meyerhofer stated that "I am sending 

you a revised quotation that addresses 

the evolution of the CCUSA printer. 

This is the same printer as before, but 

includes the added options that were 

requested (note that we have assigned a 

new part number to the printer)." The 

added options were 65ram media size, a 

manual paper cutter/tear operation, a 

real-time clock calendar and a 

24VAC@4.5A input power handling 

capability. 

39. The October 18th letter included 

higher prices for production unit quantity 

($402.50 to $457.50) and phase l 

prototypes ($23,500) compared to the 

April 25th letter, but the same price 

($850) for phase two prototype units. 

The price changes reflected the 

additional features requested by Coca- 

Cola. 

-A0400- 

-14- 


36:21-37:15, 44:8-22. 

Disputed. The "VM" printer is not also 

referred to as the CCUSA printer. The 

cited exhibit refers to PSA-66-CC 

prototype printers, which were never 

built. (M. Meyerhofer Dep. Tr. 128:16- 

129:4.) 

Rounds Decl. 1.5, Exhibit 16 at p. 143. 

Undisputed. 

Rounds Decl. 15, Exhibit 16 at pp. 

144-45. Rounds Decl. 12, Exhibit 11 

at pp. 137-38; Rounds Decl. 15, 

Exhibit 16 at p. 143. 

Undisputed as to the two documents 

reflecting different dollar eanottnts. 

Disputed to the extent it suggests the 

printers referred to in the October 18 _ 

and April 25 th docmnents are the same 

printer. 

FLVEURELOG[C'S S"i_IT OF ISSUES OF/vlATERIAL FACT IN 

OPP TO NANOPT]X_S MOTION 

2:10-CV-0767g-JFW-DTB 

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#: 1292 

Nanop_'s Alleged Uncontroverted Response in Opposition 

Facts 

40. In November 1999, The Coca- 

Cola Company sent a purchase order to 

FutureLogic for the phase 1 and 2 VM 

printer prototypes. Subsequently, in 

April 2000, Coca-Cola Enterprises sent a 

purchase order for the phase 2 prototypes 

because the latter Coca-Cola company 

was operating the units in the field trial. 

41. By March 10, 2000, FutureLogic 

had produced at least fifteen VM 

printers. 

42. After receipt of Coca-Cola' s 

purchase order, on or about April 14, 

2000, FutureLogic shipped the 24 VM 

Printers to Coca-Cola. Invoices for these 

units were issued by FutureLogic on 

April 17, 18 and 20, 2000, respectively, 

to Coca-Cola. 

43. FutureLogic was not privy to the 

locations or the models of the vending 

machines in which Coca-Cola installed 

the printers for use in the field. 

-A0401- 

- 15 - 

Rotmds Decl. 22, Meyerhofer Tr, 

137:19-143:5; Rounds Decl. 14, 

Exhibit 15 (reference to Coca-Cola 

Enterprises). 

Disputed. The cited evidence does not 

establish that a November 1999 

purchase order for "VM" units was 

issued. The cited evidence does not 

establish that an April 2000 purchase 

order for "phase 2 prototypes" was 

issued. 

Rotmds Decl. 22, Meyerhofer Tr. 

44:7-46:21; Rounds Decl. 6, Exhibit 5 

at p. 1104. 

Undisputed. 


139:19-140:6, 143:7-17; Rounds Decl. 

16, Exhibit 17; 

Rounds Decl. 17, Exhibit 18. 

Undisputed that FutureLogic provided 

24 VM units to Coca-Cola or CCE. 

Disputed as to invoices being sent on 

April 17, 18, and 20, 2000. The cited 

evidence does establish the subject 

matter of any invoices sent on that date. 


37:16-39:21. 

Disputed. Scott Shimmin of 

FutureLogic visited CCE and helped to 

install the prototype printers into Coca- 

Cola vending machines. See E. 

Meyerhofer Decl. 14; Ex. 23. 

FI.yFURELOG IC'S S'h'IvlT OF ISSUES OF MATERIAL FACT IN 


2:i0-CV-076784FW-DTB

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#: 1293 


Facts 

44. Coca-Colaplaced the 24 VM 

printers at locations throughout 

Cincinnati, and FutureLogic was not 

present when Coca-Cola installed the 

units in the field for use by customers of 

its vending machines. 

45. On August 15, 2000, Coca-Cola 

stated that ",.. FLI' s agreement was 

fulfilled with Coke upon delivery of the 

Beta printers..." 

46. The VM printers were still in use as 

of February 15, 2001 and Coca-Cola 

indicated that the field test had been 

successfid. 

47. Out of the 24 VIM printers 

provided to Coca-Cola, Coca-Cola 

returned only two or three printers to 

FutureLogic for repair or replacement. 

-A0402- 

- 16 - 

Rounds Decl., 18-19, Exhibits 19 and 

20; Rounds Decl. 22, Meyerhofer Tr. 

143:19-145:19. 

Disputed. Scott Shimmin of 

FutureLogic visited CCE and helped to 

install the prototype printers into Coca- 

Cola vending machines and CCE 

reported details regardfllg file field 

testing to FutureLogic. See E. 

Meyerhofer Decl. 14; Ex. 23. 

Undisputed as to the partial quotation. 

Disputed as to the meaning. 

FutureLogic remained involved in the 

field testing and on-going service of the 

prototype units. See infra, 91-111.) 

Rounds Decl. 21, Exhibit 22. 

Disputed. 

Objections to Evidence: The email is 

from David Uland to Mark and Eric 

Meyerhofer. To the extent that the 

document discusses Coca-Cola's 

response, the statement assertion is 

inadmissible hearsay. See Fed. R. Evid. 

80 l(c) & 802. 


174:12-20. 

Disputed. Mark Meyerhofer testified 

that he doesn't know. (M. Meyerhofer 

Yr. 174:3-20.) 

FWI_URELOG[C'S STMT OF ISSUES OF IvlA'rERIAL FACT IN 

OPP TO NA NOP'I'IX'S MOTION 

2:10-CV-07678-jFW-DTB 

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!:10-cv-O7678-J FW -DTB Document 65-1 

#: 1294 

FutureLogic's Statement of Genuine 

Issues Of Material Facts In Opposition 

To Nanoptix's Motion For Summary 

Judgment 

48. During 1997 to 2000, FutureLogic 

developed a prototype coupon printer 

named "PMC-2010-A." 

49. The "PMC-2010-A" was intended 

for Tokheim Manufacturing Company 

("Yokheim"), a manufacturer of fuel 

dispensing equipment. 

50. The PMC-2010-A printer was 

designed to print receipts and coupons 

using data received from a gas pump 

controller and a network promotional 

controller. 

51. FutureLogic built the prototype 

PMC-2010-A printer in 1997-1998 with 

the intention to present it to Tokheim, for 

whom FutureLogic developed other gas 

pump printers. 

52. FutureLogic never presented the 

prototype to Tokheim. 

53. The finnware for PMC-2010-A 

was completed and saved in 

FutureLogic's source code vault, Visual 

SourceSafe, on January 21, 1998. 

54. Visual SourceSafe is a source code 

control system that FutureLogic uses to 

control and track revisions to source 

code. 

55. January 21, 1998 is the date 

identified as the date of reduction to 

practice of the invention of the ' 855 

Patent, in FutureLogic's Supplemental 

Response to Nanoptix's [nterrogatory 

No. 3, served on July 5,2011. 

-A0403- 

- 17 - 


Supporting Evidence 

E. Meyerhofer Decl. 7 2, 3; Ex. 24; E. 

Meyerhofer Tr. 37:1 -] 7; M. Meyerhofer 

Tr. 98:20-99:1. 

E. Meyerhofer Decl. 7 2, 3; Ex. 24; E. 

Meyerhofer Tr. 37:l- 17; M. Meyerhofer 

Tr. 98:20-99: [. 

E. Meyerhofer Decl. 3. 

E. Meyerhofer Decl. 4; E. Meyerhofer 

Dep. Tr. 24:13-25. 

E. Meyerhofer Decl. 4; E. Meyerhofer 

Dep. Tr. at 25:11-26:12. 

E. Meyerhofer Decl. 5; Ex. 24. 


Rounds Decl. 11, Exhibit 10 at p. 13l. 

["tJ'I'URELOG [C' S STMT O1: IS SUES OF MATERIAL FACT IN 


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Judgment 

56. Exhibit 9 describes a in which one 

port is used for communication--either 

the MDB port or the RS232 port, but not 

both. At page 00121 of Exhibit 9, 

Section 3.4 Switch Settings indicates that 

either the MDB port of the RS232 port 

may be selected for communication. 

57. During 1997-2000, FutureLogic 

was also involved in a co-development 

project with Coca-Cola. 

58. Sometime in the late 1990s, Coca- 

Cola contacted Interleave Systems 

regarding Coca-Cola's interest in a 

coupon printer for vending machines. 

Coca-Cola did not have a precise idea of 

the type of printer it required. 

59. David Uland introduced Coca- 

Cola to Mark Meyerhofer at FutureLogic 

and proposed that Coca-Cola should 

request FutureLogic to prepare a 

specification for a printer for use in 

Coca-Cola vending machines. 

60. During the period FutareLogic 

was developing printers for Coca-Cola, 

Interleave Systems acted as a local 

technical support representative for 

FutureLogie. 

61. During the period FutureLogie 

was developing printers for Coca-Cola 

and after completion of the project, both 

Interleave Systems and Coca-Cola 

Company treated the technical 

information provided by FutureLogic as 

confidential. 


#:1295 

-A0404- 

- 18 - 


Rounds Deel., Exhibit 9 at p. 21; E. 

Meyerhofer Deel. 1 8. 

E. Meyerhofer Decl. 1 6; Exhibit 13. 

Uland Decl. 1 2. 

M. Meyerhofer Decl. 1 3; Uland Decl. 1 

2. 

M. Meyerhofer Decl. 1 3; Uland Decl. 

11 3. 

M. Meyerhofer Decl. 1 3-4; E. 

Meyerhofer Decl. I 11; Oct. 6.2011 

Ahluwalia Decl. 1 3; Uland Decl. 11 4- 

5, Exhibit A. 

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!:10-cv-07678-JFW-DTB Document 65-1 Filed 10/07/11 Page 19 of 36 Page ID 

#: 1296 

FutureLo_c's Statement of Genuine 


To Nanoptix's Motion For Summa_ 

judgment 

62. Simmy Ahluwalia, Coca-Cola's 

engineer responsible for the vending 

machine printer product, stated that 

"information exchanged among 

FutureLogic, Inc. and The Coca-Cola 

Company during the printer development 

project was treated as confidential by all 

parties involved in this field test." 

63. David Uland stated that he 

"considered the technical information 

provided by FutureLogic to be 

confidential and [he] treated it as such." 

64. In an email sent to Eric 

Meyerhofer on August 3, 2000, David 

Uland stated that "all drawings and 

confidential information will be kept 

between us as it has been always." 

65. There was a general written non- 

disclosure agreement between Interleave 

Systems and Coca-Cola that would have 

covered confidential information of 

FutureLogic provided by Interleave to 

Coca-Cola. 

66. Coca-Cola acknowledged its 

confidentiality obligation to FutureLogic, 

and treated FutureLogic's information as 

confidential. 

-19- 

-A0405- 


Oct. 6. 2011 Ahluwalia Decl. 3. 

Uland Decl. 4. 

Uland Decl. 4. 

M. Meyerhofer Decl. 3; Uland Decl. 

5. 

M. Meyerhofer Decl. 5; Ex. 25; Oct. 

6. 2011 Ahluwalia Decl. 3. 

FUTURE] .OG[C'S S]_IT OF ISSLfES OF MATERIAL FACT IN 

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Judgment 

67. A technical specification titled 

"PSA-VM-66 Communication Protocol," 

provided by FutureLogic to Coca Cola 

for the communication protocol used in 

FutureLogic's prototype printers, was 

designated "CONFIDENTIAL mad 

PROPRIETARY" and bears a notice 

stating the confidentiality obligations of 

recipients, 

68. During 1997 and 1998, 

FutureLogic considered that there was a 

possibility that a custom printer could 

entail a dual-port printer for printing 

vouchers and coupons. 

69. FutureLogic's andCoca-Cola's 

plans for the coupon printer constantly 

evolved in the 1997-2000 timeframe. 

70. Various options for printer 

functionalities, including a printer that 

would receive coupon and voucher data 

from a modified vending controller 

through a single communication port, 

mid a dispenser of pre-printed coupons 

instead of installing an actual coupon 

printer in the vending machine, were 

considered. 

71. Dnring the development project, 

several model numbers were used to 

refer to the printer FutureLogic was 

developing for Coca-Cola. 

Document 65-1 Filed 10/07/11 Page20of36 Page ID 

#: 1297 

-A0406- 

- 20 - 


E. Meyerhofer Decl. 12, Ex. 26. 

M. Meyerhofer Tr. 102:2-24; E. 

Meyerhofer Decl. 9. 


E. Meyefllofer Decl. 9. 

E, Meyefllofer Tr. at 38:16-39:5. 

F'UTUREI.OGI(2'S S]_IT (W ISSUES OF MATERIAL FA(2T IN 

)PP TO NANOPTIX?S M )TION 

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#: 1298 




Judgment 

72. The different model names were 

used to distinguish between different 

specifications that were in effect at 

different time periods, because "the 

project was evolving." 

73. On April 25, 1999, in response to 

a request from Coca-Cola, FutureLogic 

sent a "Product Quotation" for various 

quantities of a printer with model 

nnmber KBCOK-66, 

74. Exhibit 11 was sent to Coca-Cola 

to provide "ballpark printer pricing" to 

"make sure [FutureLogic and Coca-Cola] 

were converging on a solution [Coca- 

Cola] could afford." 

75. At the time of the April 25, 1999 

Product Quotation, "there was no 

physical unit" that could have been sold 

to Coca-Cola. 

76. No KBCOK-66 printer was ever 

built. 

77. Mark Meyerhofer testified that the 

April 25, 1999 proposal only led to "a 

bunch of other changes and the 

specification and costing discussions." 

78. On October 18, 1999, FutureLogic 

sent a "revised product quotation" to 

Coca-Cola providing "prototype 

charges" for building 2 "alpha" and 2 

"beta" prototype units. 

79. October 18, 1999 document also 

provided ballpark pricing for various 

possible quantities of"PSA-66-CC." 

-A0407- 

- 21 - 


E. Meyerhofer Tr. at 38:16-39:5. 

Exhibit 11 at p 137. 

M. Meyerhofer Tr. 122:6-123:8. 



M. Meyerhofer Tr. 125:1-24. 

M. Meyerhofer Decl. 6; Ex. 27. 


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Judgment 

80. The ballpark pricing was provided 

at Coca,Cola's request to allow Coca- 

Cola to assess whether the printer 

development project was worth 

continued investment by both sides. 


#: 1299 


M. Meyerhofer Decl. 6. 

81. PSA-66-CC printer was never M. Meyerhofer Dep. Tr. 128:16-129:4. 

built. 

82. In approximately March 2000, 

FutureLogic delivered prototype models 

of PSA-66-VM printers to Coca-Cola 

Enterprises ("CCE"), a bottling coanpany 

for Coca-Cola. 

83. PSA-66-VM is the prototype 

printer described in the declarations of 

Mark Meyerhofer submitted to the 

USPTO during prosecution of the '855 

Patent. 

84. Unredacted versions of 

photographs submitted to the USPTO 

indicate that the prototypes were 

manufactured in March of 2000. 

85. Firmware for the Coca-Cola 

prototype was completed in March and 

April 2000. 

86. CCE paid "prototype fees," which 

would have included a portion of 

FutureLogic's non-recurring engineering 

costs and costs for raw materials for 

manufacturing the prototypes. 

-A0408- 

- 22 - 

E. Meyerhofer Decl. 10; Rounds Ex. 

17. 

M. Meyerhofer Dep. Tr. 37:9-I l. 

M. Meyerhofer Dep. Tr. 44:23-45:3. 

E. Meyerhofer Decl. 26, Ex. 28. 

M. Meyerlaofer Tr. 142:13-143: 5; M. 


FlYI'URFA.OGIC'S SI2vlT OF ISSUES OF MA'I'FAtlAL FACT IN 


2:10-CV-0767g-JFW-D'I73 

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#: 1300 




Judgment 

87. It was Mark Meyerhofer's 

experience that "Coca-Cola required as a 

matter of business practice a proposal or 

product quotation for any new material 

that Coca-Cola would acquire and any 

expenditare to be made--regardless of 

whether the purpose was experimental or 

commercial. In response to a proposal or 

quotation, Coca-Cola would issue a 

purchase order. Coca-Cola would then 

issue payment in response to an invoice." 

88. Mark Meyerhofer states that 

"FutureLogic recouped only a portion of 

its development costs and did not derive 

a profit by charging CCE for its 

prototype fees and non-recurring 

engineering costs." 

89. Mark Meyerhofer states that 

"FutureLogic was a small company with 

approximately 10 employees at the time. 

FutureLogic could not afford to embark 

on a large development and testing 

project without receiving some income 

to defray the costs." 




M. Meyerhofer Decl. l 0. 

90. A small number of prototypes E. Meyerhofer Decl. 10; Oct. 6.2011 

were installed in vending machines in Ahluwalia Decl. 2; Uland Decl. 7; 

Cincinnati, Ohio for field trials of the Rounds Ex. 19. 

printers. 

-A0409- 

-23 - 

FLrFURELOG [C'S STMT OF IS SUES OF MAJ1:.RIAI, FACT IN 

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2:10-CV-07678-JFW-D'FB


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Judgment 

91. Before the field trials, Simmy 

Ahluwalia, a Coca-Cola representative, 

proposed certain procedures for testing 

the FutureLogic prototype printers to 

determine whether they worked for their 

intended purpose. 

92. Scott Shimmin of FutureLogic 

provided comments to Simmy Ahluwalia 

regarding the test procedures for file 

FutureLogic prototype printers in 

response to the proposal. 

93. The test plan for the printer 

included subjecting the prototype printer 

in various enviromnental conditions-- 

including, for example, different 

humidity levels and voltage variations. 

94. Scott Shimmin visited CCE and 

helped to install the prototype printers 

into Coca-Cola vending machines. 

95. Mr. Shimmin also trained CCE 

personnel in how to load coupon data 

into the prototype printers mad how to 

use the prototype printers for printing 

coupons. 

96. The prototype PSA-66-VM units 

were installed behind two separate doors 

of the vending machine. The printer 

could only be viewed or accessed by 

personnel working on the Coca-Cola 

printer project. 


#:1301 

-A0410- 

- 24 - 



E. Meyerhofer Decl. 13; Ex. 29; Ex. 

30. 

E. Meyerhofer Decl. 13; Ex. 29; Ex. 

30. 

E. Meyerhofer Decl, 14; Ex. 23. 



FUTtJREI.OGIC'S S'I ,_YI? OF ISSUES OF MA'I'I_RIAL FACT IN 


2:10-CV-O767g-Jt_V-D I'B 

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#: 1302 




Judgment 

97. Once the field trial of the 

prototype PSA-66-VM units began, 

FutureLogic continued to receive reports 

from Coca-Cola and was involved in 

resolving issues encountered during the 

field taial. 

98. FutureLogic provided to Coca- 

Cola a detailed form for reporting any 

problems encountered during the field 

trials. 

99. On May 9, 2000, Simmy 

Ahluwalia of Coca-Cola reported to Scot 

Shimmin and Mark Meyerhofer of 

FutureLogic concerning the field trials of 

the FutureLogic prototype printers. Scott 

Shimmin's reply attaches a copy of a 

form created by FutureLogic on which 

Coca-Cola was requested to report any 

problems encountered with the prototype 

printers during field testing. 

100. On April 30, 2000, Simmy 

Ahluwalia sent an email titled "Initial 

Observations" to Scott Shimmin and 

Mark Meyedlofer, after he evaluated 

several of the printers at their test sites. 

Scott Shfimnin replied on May 1, 2000, 

to report back his investigation into the 

problem, and asking Simmy Ahhtwalia 

to return the printer for further 

investigation. 

-25 - 

-A0411 - 



E. Meyerhofer Decl. 15; Ex. 311; M. 




FU'[?URELOGIC'S S]'MT OF ISSUES OF MA'I'ERIAI. FACT IN 


2:10-CV-0767g -JFW-DTB

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To Nanoptix's Motion For SummaIT 

Judgment 

101. On May 11,2000, Simmy 

Ahluwalia sent an email report to Eric 

Meyerhofer and Scott Shimmin (who 

forwarded the report to Mark 

Meyerhofer). The email discussed the 

problems he experienced trying to print 

certain coupons. As a result, Coca-Cola 

returned one of the printers and a set of 

"coupon files" to FutureLogic for 

analysis. 

102. On June 21, 2000, Simmy 

Ahluwalia provided a detailed report to 

Scott Shimmin and others regarding file 

results of initial reliability testing 

performed at Coca-Cola's laboratory in 

Atlanta. 

103. Mr. Ahluwalia stated that the 

purpose of the three tests was (1) "to 

gauge printer reliability after a set 

number of vends," (2) "to gauge coupon 

frequency and consistent reliability," and 

(3) "to gauge coupon frequency 

specifically." 

104. On June 27, 2000, Eric 

Meyerhofer and Scott Shimmin received 

reports from Coca-Cola and from the 

vending machine manufacturer, Coinco, 

regarding difficulties with the 

communication from the vending 

controller to the printer. 

105. The difficulties with the 

communication occurred in part because 

of the "'noisy' power environment that a 

vending machine represents." 


#: 1303 

-A0412- 

- 26 - 





E. Meyefllofer Decl. 19; Ex. 36. 


F'_YFURELOGIC'S SINfI! OF ISSUES OF' MA'I_RIAL FACT IN 


2; 10-CV-0767_-IFW-DTB 

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._:10-cv-O7678-JFW-DTB Document 65-1 Filed 10/07/11 Page 27 of 36 Page ID 

#: 1304 




Judgment 

106. Simmy Ahluwalia requested Scott 

Shimmin and Eric Meyerhofer to 

"pl[ease] figure out what is going on 

with the communication board to the 

printer .... " 

107. O11 July 10, 2000, Mr. Ahluwalia 

distributed a detailed "Technical Status 

Report on the Coupon Printer Field Test 

in Cincinnati." 

108. The summary of the Technical 

Status Report on the Coupon Printer 

Field Test in Cincinnati states that 

"technical glitches associated with the 

printer and the new controller" and stated 

that new software versions at been 

uploaded to both the printer and the 

controller during the course of the 

testing. 

109. Technical Status Report on the 

Coupon Printer Field Test in Cincinnati 

states that Simmy Ahluwalia would 

provide another status update the 

following month. 

110. Throughout the field trial period, 

FutureLogic and Coca-Cola discussed 

problems encountered during the field 

trial of the prototype printers and how to 

resolve those problems. 

111. Throughout the field trial period, 

FutureLogic closely monitored the field 

trials of the prototype printers. 

-A0413- 

- 27- 


E. Meyefllofer Decl. I9; Ex. 36. 

E. Meyerhofer Decl. 20; Ex. 37; E. 

Meyerhofer Decl. 21 ; Ex. 38. 

E. Meyerhofer Decl. 21; Ex, 38. 


Meyerhofer Decl. 23, 24. 


FITrURELOGiC'S S]_IT OF ISSUES OF iMA'I3g.RIAL FACT IN 


2:10-CV-O7678-JbNV- DTB


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Judgment 

112. Simmy Ahluwalia, who was Coca- 

Cola's Commercialization Engineer 

refers to the prototype development 

project as "field test." 

113. Simmy Ahluwalia states that the 

prototype printers were "used for 

experimental purposes" to determine, 

among others, "vending machine and 

pnnter technology synergistic 

perforlnance." 

114. FumreLogic received periodic 

reports and test results from CCE during 

the course of field trials, either directly 

or through David Uland. 

115. The coupon printers provided by 

FutureLogic to Coca-Cola in the 1998- 

2000 timeframe were never 

commercialized. 

! 16. On May 04, 2000, Simmy 

Ahluwalia sent an email to Scott 

Shimmin, regarding problems related 

memory loss of the printers. Scott 

Shimmin replied to Silnmy Ahluwalia on 

the same day, stating that Futt, reLogic is 

"currently in the process of redesigning 

the portion .... " 

117. Claim 1 of the '855 Patent 

requires a processor adapted to receive 

coupon data and use the coupon data to 

generate a coupon. 

! 18. Claim 1 of the '855 Patent 

requires a main communication port 

adapted to receive voucher data from a 

machine controller 


#: 1305 

-A0414- 

-28- 


Oct. 6. 2011 Ahluwalia Decl. 1 3. 

Oct. 6.201 l Ahluwalia Decl. 1 4. 

M. Meyerhofer Decl. 1 13; E. 

Meyerhofer Decl. 1 16; Uland Decl. 1 6. 

M. Meyerhofer Decl. 1 3; Oct. 6. 201. 1 

Ahluwalia Decl. 1 4; Ulmld Deci. 1 7. 

E. Meyerhofer Decl. 11 23, 25; Ex. 39. 

Dkt. No. 57, Rounds Ex. 2 at claim 1. 

Dkt. No. 57, Rounds Ex. 2 at claim l. 

FUTURELOG [C'S S'1 ,_vlT OF ISSUES OF MATERIAL FACT IN 

r 

OPP TONANOPTIX'S MOTION 

2:10-CV-O7678-JFW-DTI_ 

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Judgment 

119. During prosecution of the '855 

Patent, Mark Meyerhofer subtnitted a 

declaration informing the USPTO of the 

Coca-Cola printer development project 

and providing the relevant details 

regarding that project. 

120. The June 1,2009 declaration of 

Mark Meyerhofer states that "the soft 

drink manufacturer"---i.e., Coca-Cola-- 

made payments to cover part of 

FutareLogic's costs of developing the 

"promotional couponing system." 

121. The June 1, 2009 declaration of 

Mark Meyerhofer states that a number of 

prototype printers that embodied the 

'855 patent were constructed by 

FutureLogic for experimental use during 

the period of the project. 

122. The June 1, 2009 declaration of 

Mark Meyerhofer states that the 

prototype printers were operated for a 

period of time by FutureLogic and the 

soft drink manufacturer and that the 

prototype printers were accessible only 

to personnel of FutureLogic and the soft 

drink manufacturer. 

123. The Jtme 1, 2009 declaration of 

Mark Meyerhofer states that FutureLogic 

and Coca-Cola exchanged information 

subject to a mutual confidentiality 

agreement. 

- 29 - 

-A0415- 

Suppo rtin g Evidence 

Dkt. No. 57, Roands Ex. 3. 

Dkt. No. 57, Rounds Ex. 3 at 23 6. 

Dkt. No. 57, Rounds Ex. 3 at 23 7. 

Dkt. No. 57, Rotmds Ex. 3 at 24 8. 

Dkt. No. 57, Roands Ex. 3 at 23 6. 

F[YI?URELOG [C' S S1%IT OF ISSUES OF MA'I_.RIAL FACT IN 

OPP TO NANOPTL'C S MOTION 

2: I0-CV-07678-JFW-D'rB


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Judgment 

124. The June 1,2009 declaration of 

Mark Meyerhofer states that a decision 

was made not to commercialize the 

prototype printers and the printers were 

therefore not sold or offered for sale. 

125. After the June 1,2009 declaration, 

USPTO detennined that the claimed 

subject matter of the '855 patent was 

patentable. 

126. Simmy Ahluwalia testified that the 

"information exchanged among 

FutureLogic, Inc. and The Coca-Cola 

Company during the printer development 

project was treated as confidential by all 

parties involved in this field test." 

127. Mark Meyerhofer testified that he 

believed both Interleave Systems and 

Coca-Cola were under the obligation to 

keep, and did keep FutureLogic's 

information confidential throughout the 

course of the development project and 

thereafter. 


#: 1307 

-A0416- 

-30- 

Su ppo rtin g Evidence 

Dkt. No. 57, Rotmds Ex. 3 at 24 9. 

Dkt. No. 57, Rounds Ex. 3 at 25. 

Oct. 6. 2011 Ahluwalia Decl. 3. 


FUTURELOGIC'S STMT OF ISSUES OF MATERIAL FACT IN 

OPP TO NANOP'I'IX'S MOTION 

2:10-(2V-07678-JFW- DTB 

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#: 1308 




Judgment 

128. Eric Meyerhofer testified that 

FumreLogic provided the prototype 

printers and technical information 

regarding those printers to Coca-Cola 

subject to an. understanding that Coca- 

Cola would keep the printers and related 

technical information confidential. Eric 

Meyerhofer further testifies that he 

believes Coca-Cola abided by that 

confidentiality understanding and never 

disclosed any technical information 

concerning FutureLogic's prototype 

printers to any third parties. 

129. It was necessary to test the 

prototype printers in actual vending 

machines in the enviromnents in which 

vending machines are normally placed to 

determine whether the printers would 

work reliably to perform their intended 

purpose of printing coupons in the field. 

Durability and ruggedness are inherent 

requirements of the promotional printer. 

130. Field testing of the prototype 

printers was necessary to determine 

whether and how they would function in 

actual vending conditions--including, 

for example, conditions of varying power 

levels present in a vending machine and 

varying humidity and temperature in the 

environment. 

-A0417- 

- 31 - 



M. Meyerhofer Decl. 8; D. Stubben 

Dep. Tr. at 40:8-42:7 


[:U'FUREI.OGIC'S $7 ,'MT OF ISSUES OF MATF.RIAL FACT IN 


2:10-CV-07678 -JFW-D'I'B

Case __: 10-cv-O7678-JFW -DTB 

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Judgment 

131. Testing was also necessary to 

determine whether the prototype printers 

would fimction for their intended 

purpose of printing coupons using 

coupon data sent to tile printers from a 

promotional controller and printing 

vouchers based on data received from the 

machine controller. 

132. Testing was also necessary to 

determine whether the printer would jam 

if a customer tried to put his finger over 

the bezel or insert an object into the 

bezel. 

133. Testing was required to determine 

whether tile prototype printer was sturdy 

enough to withstand customer abuse, 

such as attempts to manipulate or 

interfere with the printer. 

134. Testing was fitrther necessary to 

determine how and whether tile printer 

would function in wet or rainy conditions 

to which all outdoor vending machine 

would be exposed. 

135. The coupon pnnters provided by 

FutureLogic to Coca-Cola in the 1998- 

2000 timeframe were for experimental 

purposes and never commercialized 


#: 1309 

-32- 

-A0418- 



E. Meyerhofer Decl. l 0. 



M. Meyerhofer Decl. 3; Oct. 6. 2011 

Ahluwalia Decl. 4; Ulmld Decl. 7. 

FLI'I'URELOG[C'S S] _,|'1" OF ISSUES OF MATF.RIAL FACT IN 

OPP TO NA NOPTIX'S MOT[ON 

2:10-CV-07678- Jt,%V-DTB 

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#:1310 

Nanoptix's Alleged Conclusions of Response in Opposition 

Law 

48. Under 35 U.S.C. § 102(b),"A 

person shall be entitled to a patent 

unless...the invention was on sale or in 

public use in this country more than one 

year prior to the date of the application 

for patent in the United States." 

49. Tile filing date for the '855 Patent 

is March 29, 2002. The "critical date" 

for file '855 Patent is therefore May 29, 

2001 and any on sale or public use 

activity in the United States prior to that 

date invalidates the '855 Patent. 

50. It is Nmloptix's burden to prove 

the '855 Patent invalid under 35 U.S.C. 

§ 102(b) by clear and convincing 

evidence. 

51. The on sale bar applies when two 

conditions are satisfied: First the 

product must be the subject of a 

commercial offer for sale... Second, the 

invention must be ready for patenting. 

52. The condition of reading for 

patenting may be satisfied in at least two 

ways: by proof of reduction to practice 

before the critical date; or by proof that 

prior to the critical date the inventor had 

prepared drawings or other descriptions 

of the invention that were sufficiently 

specific to enable a person skilled in the 

art to practice the invention. 

-A0419- 

-33 - 

Undisputed but incomplete. "The 

product must be the subject of a 

commercial offer for sale." PfqfJ; 525 

U.S. at 67. 

Disputed. The critical date is not May 

29, 2001. 

Undisputed. 

Undisputed. 

Undisputed, but should read "ready for 

patenting" not "reading for patenting." 

FU'IIURELOG [C'S S'I_IT OF ISSUES OF MATERIAL FA(2T IN 


2; 10-CV-0767g-JVW-DTB

Case _):10-cv-07678-JFW -DTB 

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Document65-1 Filed 10/07/11 Page34of36 Page ID 

#:1311 

Nanoptix's Alleged Conclusions of Response in Opposition 

Law 

53. The Supreme Court's "ready for 

patenting" test in Pfhff, applies to the 

public use bar under § 102(b). Thus, if 

the invention is in public use and ready 

for patenting prior to the critical date it 

is invalid under § 102(b). 

54. It is undisputed that the claimed 

invention of the '855 Patent was ready 

for patenting prior to the critical date. 

FutureLogic avers that the claimed 

invention was reduced to practice by 

January 21, 2008. 

55. The claimed invention was the 

subject of a commercial offer for sale on 

April 25 and October 18, 1999. 

56. FutureLogic sold 24 VM printers 

which embodied the claimed invention 

to Coca-Cola for public use at various 

locations in Cincimlati, Ohio. 

57. The transaction with Coca-Cola 

was not for purposes of 

experimentation. Once the claimed 

invention is reduced to practice, there 

cau be no experimental use negation. 

Moreover, once there has been a 

commercial offer, there can be no 


-A0420- 

-34- 

Disputed. Evidence that the public use 

or sale of the patented device was 

primarily experimental negates 

invalidity under § 102(b). See, e.g., 

Monon Corp., 239 F.3d 1258; Atwzco, 

Inc. v. Cyclops Corp., 791 F.2d 147,150 

(Fed. Cir. 1986) (reversing district 

court's grant of summary judgment of 

invalidity because the district court 

failed to credit evidence that "provisions 

were made for reporting back to [the 

patentee] the results of testing and that 

modifications made to the alloy by 

Annco were based on these reports"). 

Disputed. FutureLogic did not aver that 

the claimed invention was reduced to 

practice by "January 2 l, 2008." 

Disputed. Facts 56-135. 

Disputed as to public use. See supra, 

56-135. 

Disputed. See supra, 56-135. 

FUTUREI.OG[C's SJ _'MT (')F ISSUES OF MATERIAL FACT IN 

OPP TO NANOPTIX?S MOTION 

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k10-cv-O7678-JFW-DTB Document 65-1 Filed 10/07/11 Page 35 of 36 Page ID 

#:1312 

Nanoptix's _leged Conclusions of 

Law 

58. After reducing its claimed 

invention to practice, FutureLogic had 

no control (or involvement) with Coca- 

Cola's field testing of the claimed 

invention nor were customers aware of 

the testing, negating any notion of 

experimental use. 

-A0421- 

-35 - 

Response in Opposition 

Disputed. See Atlanta Attachment Co. 

v. Leggett & Platt, Inc., 516 F.3d 1361, 

1368 (Fed. Cir. 2008) (Prost, J. and 

Dyk, J. concurring) (,Pjaffindicates that 

the experimental use doctrine should 

apply more broadly than the limited 

period suggested by a reduction to 

practice cutoff."). Nanopfix's reliance 

on dicta contained in post-PJaffcases 

that repeat the pre-Pfafflangnage is 

misplaced. See id. at 1368-69. 

The viability of the experimental use 

doctrine after reduction to practice is 

confirmed by several recent Federal 

Circuit decisions. For example, in Eli- 

Lilly And Co. v. Zenith Goldline 

Pharms., Inc., 471 F.3d 1369 (Fed. Cir. 

2006), the court found that the patent 

holder's clinical trials of the patented 

compositions were not a public use 

because they were experimental use 

"that negated any section 102 bar." Id. 

at 1380-81, The experimental use 

doctrine was applicable despite the fact 

that the invention had clearly been 

reduced to practice before the clinical 

trials of the claimed substance in 

humans--a composition is reduced to 

practice "when it is completely 

composed." P/qff_ 525 U.S, at 57 fla. 2 

(quoting Corona Cord "Hre Co. v. 

Dovan Chemical Corp., 276 U.S. 358, 

383 (1928)). Similarly, in In re 

Mahurkar, supra, the Federal Circuit 

found that a pre-critical date sale of two 

prototypes was not an invalidating 

§102(b) sale "even though the prototype 

was a reduction to practice" because the 

F'_fl'_.JRELOGiCIS S I_lq" OF ISSUES OF MATERIAL FACT IN 

OPP TO NANOF£1X'S MOTION 

2:10-CV-0767_-JFW-D'[_

Case 

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!:10-cv-07678-JFW-DTB Document 65-1 Filed 10/07/11 Page 36 of 36 Page ID 

#:1313 

Nanoptix's Alleged Conclusions of 

Law 

59. An invention is in public use if it 

is shown or used by an individual oilier 

than the inventor under no limitation, 

restriction or obligation of 

confidentiality. 

60. Coca-Cola had 11o limitation, 

restricti on or obligation of 

confidentiality in its purchase of the 

prototypes from FutureLogic. 

Response in Opposition 

sale was not a commercialization of the 

_atented catheters. 71 F.3d at 1576. 

Undisputed but immaterial because 

there was an obligation of 

confidentiality in this case. See infra 

56-135. 

Disputed. See ruff'a, 62-67. 

Dated: October 7,2011 Respectfillly submitted, 

-36- 

-A0422- 

BRETT J. WILLIAMSON 

MICHAEL MYERS 


By:/s/Brett,L Williamson 




b_]!I'URELOGIC'S S 1_137 OF ISSUES OF MATERIAl, FACT rdq 

OPP "TO NANOPTIX'S MOTION 

2:IO-CV-O76784_,'W_DTB 

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2:10-cv-O7678-JFW-DTB Document65-2 Filed 10/07/11 Page 1 of 6 Page ID 

#:1314 

BRETT J. WILLIAMSON (sB. #145235) 

_williamson@omm.com 

MICHAEL MYERS (s.B. #240652) 

mmvers@omm.com 




Telephone: (949) 760-9600 

Facsimile: (949) 823-6994 




Corporation, 

W. 



Plaintiff, 


Corporation, 

De_ndmlt. 

-A0423- 


FUTURELOGIC'S IPROPOSEDI 

STATEMENT OF DECISION 

DENYING DEFENDANT'S 





Time: -1:30 p.m. 



FIfI'URELOGIC'S PROPOSED STATEMENT OF 

DECISION 

CV 10-07678-JFW (DTI3X)

Cas_, 2:10-cv-O7678-J FW -DTB 

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#:1315 

This Court, having reviewed the motion for summary judgment of invalidity 

_-filed by Nanoptix, Inc. ("Nanoptix"), tile opposition fllereto filed by FutureLogic, 

Inc. ("FutureLogic') and considered all admissible evidence and argument in 

support, opposition, rind reply, issues the following decision. 

Nanoptix's motion asserts that certain activities of FutureLogic that occurred 

during fl_e course of a joint development project between FutureLogic and the 

Coca-Cola Company ("Coca-Cola") constituted invalidating offers for sale, sale, 

and public use under 35 U.S.C. § 102(b). For the following reasons, the Court 

denies Nanoptix's motion for sulnmary judgment. 

In P./affv. Wells Electronics, Inc., 525 U.S. 55 (1998), the Supreme Court 

aunounced two conditions that must be satisfied before the "on-sale bar" of 35 

U.S.C. § 102(b) applies to invalidate a patent. First, "the product must be the 

subject of a commercial offer for sale." t_aJ]_ 525 U.S. at 67 (emphasis added). 

This analysis requires determining whether "the sale was commercial rather than 

experimental in nature." id. Second, the invention must "'ready for patenting." ld. 

An invention is ready for patenting if it has been reduced to practice or if the 

inventor has prepared sufficiently specific drawings or descriptions of the invention 

to enable a person skilled in the art to practice it. ld. at 67-68. 

Regarding the first prong of the Pfafftest, evidence that a sale, offer to sell, 

or use was primarily experimental, rather than commercial, negates invalidity under 

35 U.S.C. § 102(b) for such activities. An accused infringer bears the burden to 

prove invalidity by clear and convincing evidence. Lisle Corp. v. A.J. Mfg. Co., 

398 F.3d 1306, 1316 (Fed. Cir. 2005). To prove invalidity based on a sale or offer 

to sell, "the accused infringer must prove by clear and convincing evidence that 

there was a definite sale or offer to sell more than one year before the application 

for the subject patent, and that the subject matter of the sale or offer to sell fully 

anticipated the claimed invention." In re Mohurkar Double Lumen Hemodialysis 

Catheter Patent Litigation, 71 F.3d 1573, 1576 (Fed. Cir. 1995). Likewise, to 

-A0424- 

FUTUPJ3LOGIC'S PROPOSED STATEMENT OF 

- 2 - DECISION 

CV IO-07678-JFW (DTBX) 

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,2:10-cv-O7678-JFW-DTB Document 65-2 Filed 10/07/11 Page 3 of 6 Page ID 

#:1316 

prove invalidity based on public use, an accused infringer must prove by clear and 

convincing evidence that "(l) the invention was used in public and (2) file use was 

not primarily experimental in purpose." Allied Colloids' Inc. v. Amer. Cyanamid 

Co., 64 F.3d 1570, 1574 (Fed. Cir. 1995). 

ff the accused infringer presents aprimafacie case of a commercial sale, 

offer to sell, or a public use, "the patentee must simply produce sufficient rebuttal 

evidence to prevent the party challenging the patent's validity from meeting its 

burden of proving by clear and convincing evidence that the invention was in public 

use" or on sale. See Lisle Corp., 398 F.3d at 1316 (addressing evidence required to 

establish invalidity based on public use). Evidence that the public use or sale of the 

patented device was primarily experimental negates invalidity under § 102(b). See, 

e.g., Morion Corp., 239 F.3d 1258; Armco, hTc. v. Cyclops Colp., 791 F.2d 147, 150 

_Fed. Cir. 1986) (reversing district court's grant of summary judgment of invalidity 

because the district court failed to credit evidence that "provisions were made for 

reporting back to [the patentee] the results of testing and that modifications made to 

the alloy by Armco were based on these reports"). 

In this case, there is at least a genuine issue of material fact regarding 

whether FutureLogic's development project was primarily experimental rather than 

commercial. See Mono Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1258 

(Fed. Cir. 2001). 

Coca-Cola engineer Mr. Ahluwalia confirmed that the printer prototypes 

provided by FutureLogic to Coca-Cola "were used for experimental purposes" and 

were "never commercialized." (S. Ahluwalia Decl. 4.) Contemporaneous 

documents establish that Coca-Cola and FutureLogic worked closely together to 

determine whether the prototype printers would reliably perform their intended 

functions in a vending machine placed in the field--including, for example, 

receiving coupon data for printing coupons, printing coupons, and receiving data 

from the vending controller under conditions of varying power supply, varying 

-A0425- 

FIYI'URELOGIC' S PROPOSED STATEMENT OF 


CV 10-07678-JFW (DTI3X)

Cas, 

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#:1317 

humidity, customer abuse, and operator error. (Facts, 129-130.) It is well 

settled that where testing is required to determine that an invention will work ill its 

intended enviromnent, such testing (and prototype sales incident to such testing) do 

not place an invention "on sale" or in "public use" within the meaning of Section 

102(b). See Kolmes v. World Fibers Corp., 107 F.3d 1534 (Fed. Cir. 1997) (pre- 

critical date testing of meat packing gloves in a meat packing plant was not public 

use or on sale bar because "[a]n inherent feature of Kolmes' invention was 

durability, the ability to withstand use in an environment such as a meat-packing 

plant"). 

In addition, the evidence demonstrates that Coca-Cola was under an 

obligation of confidentiality to FutureLogic. The "PSA-VM-66 Communications 

Protocol," which describes how the prototype printer communicated with a machine 

controller and promotional controller to perform its intended functions, was clearly 

designated "CONFIDENTIAL and PROPRIETARY." (Facts, 1 67.) Coca-Cola's 

engineer responsible for the project testified that information exchanged among 

FutureLogic, Inc. and Coca-Cola was "treated as confidential by all parties" and 

that he maintained FutureLogic's technical information as confidential "as did 

others at The Coca-Cola Company." (Facts, 1 126.) In addition, both Mark and 

Eric Meyerhofer have testified that they provided printers and information 

regarding the printers to Coca-Col a subject to an understanding that such material 

would be kept confidential. ( Facts, 11 127-128.) Interleave Systems, the third 

party who introduced FutureLogic and Coca-Cola, considered itself subject to a 

confidentiality agreement and treated FutureLogic's information as confidential. 

(Facts, 11 63-65.) Lastly, a letter from Coca-Cola to FutureLogic proposed an 

agreement that would have memorialized both parties' understanding that 

information exchanged during the development project was to be kept confidential. 

(Facts, 1 66.) This evidence of a confidentiality obligation between Coca-Cola and 

FutureLogic is sufficient to withstand Nanoptix's motion for summary judgment. 

-A0426- 

FUTURELOGIC'S PROPOSED STATEMENT OF 


CV 104)7678-JFW (I)TBX) 

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#:1318 

The evidence demonstrates that FutureLogic was closely involved in testing 

the prototype printers, received regular reports regarding the results of the testing, 

and made modifications in response to information learned through testing. (Facts, 

7 97-111.) The evidence fnrther shows that before tile field trials, FutureLogic 

engineers--including Eric Meyerhofer and Scott Shimmin--worked with Coca- 

Cola to develop a set of procedures for testing the prototype printers in vending 

machines. (Facts, 77 91-93.) The evidence also establishes that Mr. Shimmin, an 

employee of FntureLogic, helped install prototypes in vending machines at the 

commencement of the field trials and trained CCE personnel in how to operate the 

printers. (Facts, 77 94-95.) 

hnportantly, FutureLogic prepared a questionnaire for use by Coca-Cola 

representatives to report any problems with the prototypes in the field. (Facts, 

98.) In addition, Mr. Ahluwalia, a Coca-Cola representative, frequently reported 

information concerning the status of the field tests to Mark Meyerhofer, Eric 

Meyerhofer, and Scott Shilnmin. (Facts, 77 99-107.) As a result of such reporting, 

FutureLogic made several modifications mad improvements to the prototype 

printers and the coupon data used with its printers. (Facts, 77 116.) These 

modifications directly impacted claimed elements of the printer--such as the ability 

to receive coupon data and print a coupon using that data and tile ability to receive 

voucher data from the machine controller. (Id.) 

Nanoptix's motion for summary judgment is denied because the evidence 

raises at least a genuine issue of material fact that FutureLogic's alleged sale, offers 

to sell, and public use of tile printers developed with Coca-Cola were made for 

experimental purposes. Nanoptix's motion for summary judgment is denied for the 

additional reason that the alleged offers for sale identified printers that were never 

built and Nanoptix has not proven by clear ,'rod convincing evidence that the offers 

related to a printer that embodies the '855 Patent. 

-5- 

-A0427- 

FUTURELOGIC'S PROPOSED STATEMENT OF 

DECISION 


Cas{ 2:10-cv-07678-JFW -DTB 

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Dated: 


#:1319 

By: 

-A0428- 

JOHN IF. WALTER 


-6- 

FUTUP, ELOGIC'S PROPOSED STATEMENT OF 

DECISION 

CV 10-07678-JFW (DT}3X) 

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2:10-cv-O7678-JFW-DTB Document65-3 Filed 10/07/11 Page 1 of 4 Page ID 

#: 1320 


bwilliamson_omm.com 

MICHAEL L_ MYERS (S.B. #240652) 

mmvers(g_,olnm.com 

O'M.ELVENY & MYERS LLP 

610 Neumort Center Drive 17th Floor 

Newpori_ieach, CA 92660-6429 

Telephone: (949) 760-9600 

Facsunile: (949) 823-6994 




Corporation, 

V° 



Plaintiff, 


Corporation, 

Defendant. 

-A0429- 


DECLARATION OF BRETT J. 

WILLIAMSON IN SUPPORT OF 

FUTURELOGIC'S OPPOSITION 

TO NANOPTIX'S MOTION FOR 


INVALIDITY OF U.S. PATENT NO. 

7,594,855 

Judge: 

Hearing Date: 

Hearing Time: 

Pre-trial 

Conference: 

Trial Date: 

Hon. John IF. Walter 

Oct. 31, 2011 

1:30 pm 

Dec. 16, 201 l 

Jan. 10, 2012 

DECLARATION OF BRETI" WILLIAMSON 

2:I0-CV-07678-JFW-DTB

Cas_, 2:10-cv-O7678-JFW-DTB Document 65-3 Filed 10/07/11 

#:1321 

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I, Brett J. Williamson, declare and state as follows: 


1. I am an attorney with the law firm of O'Melveny & Myers LLP, and 

lead trial counsel for FutureLogic, Inc. ("FutureLogic"). I submit tiffs declaration in 

support of FutureLogic's Opposition to Nanoptix's Motion for Summary Judgment 

of Invalidity of U.S. Patent No. 7,594,855 (hereinafter "the '855 Patent"). The facts 

set forth in this declaration are known to me personally. If called as a witness, I 

could and would testify competently concerning these matters. 

2. Attached as Exhibit 23 to dais Declaration is a true and correct copy of 

a document bearing Bates number FL0021204. Eric Meyerhofer confirmed the 

authenticity of this document. See E. Meyerhofer Decl. 14. 

3. Attached as Exhibit 24 to tllis Declaratxon is a true and correct copy of 

a document bearing Bates numbers FUT0010914-FUT0010916. Eric Meyerhofer 

confirmed the autlaenticity of this document. See E. Meyerhofer Decl. 5. 

4. Attached as Exhibit 25 to this Declaration is a true and correct copy of 

a document bearing Bates numbers FUT00037346-FUT0037354. Eric Meyerhofer 

confirmed the authenticity of this document. See E. Meyerhofer Decl. 12. 


a docmnent bearing Bates numbers FL0001781. Eric Meyerhofer confirmed the 



a document bearing Bates numbers FL00232942-FL0023294. Mark Meyerhof'er 

confirmed the authenticity of this document. See M. Meyerhofer Decl. 6. 


a document bearing Bates numbers FUT00109005- FUT00109013. Eric 

Meyeflaofer confirmed the authenticity of this document. See E. Meyerhofer Decl. 

726. 


a document bearing Bates numbers FL0003543-FL0003545. Eric Meyerhofer 

-2- 

-A0430- 


2:10-CV-07678-JFW-DTB 

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9. Attached as Exhibit 30 to this Declaration _s a true and correct copy of 

a document bearing Bates number FL0019004. Eric Meyerhofer confirmed the 

authenticity of this docmnent. See E, Meyerhofer Decl. 13. 

10. Attached as Exhibit 31 to this Declaration is a m_e and correct copy of 

a doctunent bearing Bates number FL0002932. Eric Meyerhofer confirmed the 



a document bearing Bates numbers FL0002930-FL0002931. Mark Meyerhofer 

confirmed file authenticity of this document. See M. Meyerhofer Decl. 11. 


a docmnent bearing Bates numbers FL0003579. Mr. Mark Meyerhofer confirmed 

the authenticity of tiffs document. See M. Meyefllofer Decl, 12, 


the document bearing Bates numbers FL0003590. Mark Meyerhofer confirmed the 

authenticity of this document. See M. Meyerhofer Decl. 13. 

14. Attached as Exhibit 35 to this Declaration _s a true and conect copy of 

the document bearing Bates numbers FL0003905, Eric Meyerhofer confirmed the 



the document bearing Bates numbers FL0003906-FL0003907. Eric Meyerhofer 



the document bearing Bates No. FL0003914. Eric Meyerhofer confirmed the 

authenticity of this docnment. See E. Meyerhofer Decl. 20. 


the document bearing Bates numbers FL0003915. Eric Meyerhofer confirmed the 


-A0431 - 

- 3 - DECLARATION OF BRET'F WILL1AMSON 

2:10-CV-07678-JFW-DTB

Case, 2:10-cv-07678-JFW -DTB 

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Document 65-3 

#: 1323 



the document bearing Bates number FL00021208. Mr. Eric Meyerhofer confinned 

the authenticity of this document. See E. Meyerhofer Decl. 23. 

I declare under penalty of perjury under the laws of the United States 

of America and the State of California that the foregoing is true and correct, and 

that this declaration is executed this 7th day of October, 2011 at Newport Beach, 

California. 

-A0432- 

-4- 

/s/ Brelt J. Williamson 

Brett J. Willimnson 



2:10-CV-07678-JFW-DTB 

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CONFIDENTIAL 


#: 1324 

Monday 4/L7 

Tuesday4/18 

Wednesday 4/1,9 8:00 am 

T!mrsday 4/20 6 00 am 

Friday 412 l: 9:00 am 

Detailed Agemla .for Coupon Printer Field Test, 

Week of.4]i 7 

Tinte Acfivific_ Participants 

8:30 am Mect al Wihner lo¢.,"ttion zmdasscss 

all inventOB, sent for tmrdwam inslalls: 

Begiit plwsicalJnstallafions of the hardware 

on ihe venders hi housc_ 

"7:30 am Begin install oft thc vender at Duck Creek 

Conthlac'with the h'_stalling of the hardware 

on. tile venders at Wilmer Ave_ 

Train Matthew on coupon crcaiionZvender 

assignment/lmnsferring files to Pahn/daiabase, 

management, etc. .... 

Cotaiuue traiffmg/coupmt sanlpling-testing 

Train 1/S on:ihe Palm application 

Iustalt hardware on machines in the field 

Funcliom'dly tesi each v_nd .... th_ _,,hn_, 

Location 

PrelY_re :for routedriyer supervisor training at 

6:30 a.m. at Duck Creek 

Train service technicians at 8:30 a.m. at lhe Wiliner 

location 

Re-cap any outslandiug issues 

Finish up any remainii]g instal|ation issues 

Prcpare for insiafiafion & inachines into fl_¢ field: 

Test venders fo_ cOrreCt funedoitaJ opemdon 

00001 

FutureLogic's Summary Judgment Exhibit No. 23 

-A0433- 

Royal. Silmny, Justin,. 

CCE 

Royal, Simmy, Jhstin,. 

CCE 

'Royal. Strum., 5 Justin 

Royal. Simmy, Justin. 

CCE 

Jodi, Malthew, Scot[ 

Jodi_ Matthew, Scott 

Jodi_ Matihew, Scott: 

Simmy;. Royat, Justin: 

CCE 

Simmy, Royal, Justin. 

CCE, Jodi, Matthew, 

Scott 

Ma tl_ew, Scotl; Siuuuy 

David 

Mattfiew, Scott; Shmuy 

David 

Matflle% Scott, Simmy 

David 

Simmy, CCE 

Simmy: CCE 

S _uuny, C'CE 

FL0021204

CONFIDENTIAL 

Case2:10-cv-07678-JFW-DTBDocument65-4 Filed10/07/11 

#:1325 

Dat...._._e_ 

4/2_, 

4/25 

4/26 

4127 

4/28 

Date 

512 

Detailed Agenda ,for Coupon Printer ::Field Test 

Week of 4/24 

Time Activities 

8:00 am 

Tesf remaining readers for proper function_dit_ 

Agree onpkm together for.re-locaiing/installing 

venders in the field 

Have rot/re super_jsorsi!oad files onto file hand-hdd 

TBD Start to re-locate the venders to the:field 

TBD Continue Io _e-locate flae ven.ders to tile field 

TBD Continue to re-locale the venders to the:field 

TBD Complete re-locating'venders to ihe field 


Participants 

CCE. Simmy 

CCE_ Simmy 

Matthew i Simmy 

CCE, Silmny 

CCE_ Simmy 

CCE, Simmy 

CCE_ Silmny 

Detailed Agenda for Coupon Printer Field Test 

Week of 5/1, 

Time Aetisiiies 

8:00 _1m ti!stall:the resi_ed _d _nelg_lpl_jcs/thirslyil)a _:els 

in. all of [he _,:'cndegS i_1:the field. 

•Auait ,hosevenders for proper o_ratign oUIle 

eoup0_, p_irit ers,!redez?iaption_ 

8:00 am Audit rematnh_g vend?rs for prOl_r operation of 

the coqp_n printersdre:demptioo 

00002 

Pa,-tici_ 

Futurekogic's Summary Judgment ExhJbit No. 23 

-A0434- 

Mfltthe_iL SiKtmy_ CCE 

Malfhcw, Si,mny 

Matthew. Simmy 

FL0021205 

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Highly Confidential - Outside Counsel Only 

00003 


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FUT00109014


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***************** Version ii ***************** 


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_**************** Version 10 ***************** 


Added 2xxxbios.tbl 

***************** Version 9 ***************** 


Added 2xxxBIOS.swr 

***************** Version 8 ***************** 


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-A0436- 

F UT00109015

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#: 1328 


Added 2xxxBIOS.RG 

***************** Version 7 ********e******** 


Added 2xxxBIOS.mem 

***************** Version 6 ***************** 


Added 2xxxBIOS.bak 

***************** Version 5 ***************** 


Added 2010a.mod 

*******_********* Version 4 ***************** 


Added 2010a.hwr 

***************** Version 3 ***************** 


Added 2010a.btm 

***************** Version 2 ***************** 


Added 2000.A96 

***************** Version 1 ***************** 


Created Tokheim 

Comment: 


00005 


-A0437- 

F UT00109016

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c£_ Fu'ruRELOGIC, INc. #:1329 

Futurelogic,Inc. www.futurelogicinc.com 

425 E, Coto'_ado St. Ste 670 


(818) 244-4700 fax: (818) 244-4764 

September 29, 1999 

Mr. Kenneth A. Silvo 

Strategic Purchasing Manager 

Sales Equipment 

The Coca Cola Trading Company 

Atlanta, Georgia 

Dear Kenneth: 


Thank you for forwarding tile agreement on exclusivity and intellectual property. Please consider the 

point by point notes that follow as our response to the agreement. 

• . lll4-r" 

I agree in p_h your statement_,t.belntention of the re_l_onship to b_utually exclusive given 

that the parties are recel'c,i_od y,atge from the relationship• In y'N_ case_ou are embarking on a pilot 

of a new vending reach'me b_ing system which will requireT_l'd evaluation to determine if it 

is a viable marketing tooJ.¢afid in our cas"g'_re willing to gamble o_"rdrkources that your plan is on 

target. It is risk we take together. _ f \ 

- Our business plan calls for Fu_hc,elogic to remain in a position to respond to printer needs in a variety of 

industries. Since a sizeable portio._ f.our business is as a sup_t_er and third party support for certain 

i Japaneese printer manufacturers, it is"i_portant that we are i_a position free of legal encumbrances to 

/ support their efforts in the broad range 5fkapplications they}(ddress, otherwise we loose our value to 

/ these manufacturers and this aspect of our'°oxusiness would/_uffer. This philosphy has typically lead to our 

avoiding entering agreements which limits o'_ ability to/pply our intellectual property to a specific 

application. We are always willing to protect h_roducyon behalf of a customer, but the intellectual 

{ 

property itself which makes up ft.mt por duct is nolo _tbvered. It is due to:this philosophy that we are in a 

free and clear position to comlnit to your companyKl_t we can develop your vending machine coupon 

printer system without having to navigate a collecti_ln'_ agreements to determine if infringements exists 

or could develop. I sure you can image the imped]/'nent'tR our ability to complete a deal if our design 

came with a list of applications_tallati_s (someN_hich be impossible for you to crystal ball at 

this time) which were off limits due to prior agr/ements. It i_,_requirement of your agreement 

(Warranties iii) that we are in afree and cle@on legally, _ we are able to indeed make that 

warranty. / -- 

yOver the last 12 years, we have developed_hly/featured, flexible,, thermal printing platform which is 

/_geared to rapid modification in order tobe able__to a wide range of needs. Some of our 

Highly Confidential-Outside Counsel Only 

f 

/ 

/ 

00006 

FutureLogic's Summa_ Judgment Exhibit No. 25 

-A0438- 

FUT00037346


FUTURELOGIC, INC. #: 1330 

Futurelogic, Inc. www.futurelogicinc,com 

425 E. Colorado St. Sle 670 


(818) 244-4700 fax: (818) 244-4764 

/ 


be simply making modifications to this't_hnolo_ to create the printer. And of course there are area__ of 

produ¢ts and ear]ier work are indee_rrently usej_r couponing. In the case of your printer, we will 

the project which clearly are not our prope_ch asthe MDB bus for example. 

I have made these points so that you will_nderstai_t_e background leading to below. 

If you have comments or concerns to our replies, please feel free to contact me. We thank you for the 

opportunity to develop a product for you coupon program and look forward to doing business with you. 

Sincerely, 


President 


00007 


-A0439- 

FUT00037347 

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FUTURELOGIC, INC. #: 1331 

Futurelogie, Inc. www.luturelogicinc.com 

425 E. Colorado St. Sle 670 


(818) 244-4700 fax: (818) 244.4764 

" Please note the following changes to the agreement dated 8/25/1999: 

Warranties (iv) 


Chan_e "the System to read: will be free from defects in material and workmanship, and will conform to the 7/ 

functional specification for the system as provided by Coca-Cola;" 

The functional specification developed by Coca-Cola accurately specities what is mechantabl_and 

fit for the purpose ........................... _..... !,.__,-o -_ _- 

fo " " ese 

,_enel ..... th..... tr, I thircl party whict_ _Jetermine the unit t_,,,_esafe. 

Warranties (v) 

Strike the paragraph. 

The nature of this paragraph is so broad that itwould require that we were privy to all intended final 

destination sites for the machine• "_.--,,.,_=_...=..: ____ _q"°"; _2 _w.n,,,,_ ,k;_ ..... 1--, ,:.:_.,,;_, ,_ 

a^^,-.-.:..... ,od ex_s wltu ,, _-:'_":_ _neFg',, -¢ ......... *_*ht""_'i"'!:-- _rlt? We cannot warrant 

that our units m_%_a 

search. 

requirement which may be completely unknown even after a due dilligence 

hink the proper approach _tl_e to add the_untries the product was intended for to the 

ecification, and we collectively_ine _vfiich agency approvals and regulations are required for 

} tlaat eountw_. _e s_cification _voul_utlinethat the product rr_et those requiren)_nts. In 

martlaer_'l'here.z_no confusion, and _,e_w_rrant is something._hieh can be reliegVupon as 

b_his is ac_a_,._lYaragrap_ be amende_t_dicate that 

Fgldre_g'cy_" r d_t _ets the intem_,ional requit'ei_'ents as specifie¢L_ 

Exclusivity 

Change to read: 

Futurelogic agre_not 

t ('_1¢_° 

to n)ake, use, or sell, directly o_ 

or to license others to do the same, 

the System, or " or impr 

_._ for use _nsoft drink vending 

•machines, except for and" to Coca-Cola - - " --and- its " designee- " " s bT'ff_eriod of five (5) years form 

connmaercialiZation oi'the System. System exclusivity a _plies to the complete product as described 


00008 


-A0440- 

FUT00037348

' Case 2:10-cv-07678-JFW-DTB Document 65-6 

FUTUREI..OGIC, iNC. #:1332 

Futurelogic, Inc. www.fut urelogicinc.com 

425 E. Colorado St. Ste 670 


(818) 244-4700 lax: (818) 244-4764 

Filed 10/07/11 Page 4 of-9 

in Exhibit A _a_y-_er sigzificaztb' !mi!ar product, but does not apply to the discrete Intellectual 

Property components as described in the following paragraph "Intellectual Property". Exclusivity is 

predicated on the condition that Coca-Cola or its designees purchase the following amounts in the 

years show_ 

Year 2000--11,000 ufflts "_k_... x. 

Year 2001 4_i000units i-'O_-.. ] 

Year 2002-_ tO,000_units / ,. 

Year 2003 -[1 SOO_O_units _/ 

Year 2004 -_ 

The foregoingvohimes areconditionsforexclusivityand arenotcommitments topurchase. 

In exchange, to the extent Coca-Cola obtains patent protection on the System developed hereunder, 

._Cpca-Cola grantsE_relo_ic an_exclusive license to make the System, for uses within the United , 

St_-es, for &.o_enod of five (5) yeargTrom January 1 Of the year 2000, but only for Coca-Cola and its / 

designees.(_n_titioned upon }he System being of high quality, meeting th_ ...... ." 

specification of Exhibit A, and being available at the price and conditions of Exhibit B. If 

Futurelogic fails to provide the System under such terms, Coca-Cola, its subsidiaries, affiliates, 

authorized bottlers, suppliers, and/or vendors will be free to purchase such products from other 

parties, and such purchase shall not constitute a breach under this Agreement. 

Our understanding is that the application and interest for the Coca-Cola company in this product is - o 

for use in soft drink vending machines, as opposed to vending machines of all types. 

._k_:-c'.:,,.c a..2 _-'TF'__"__!" th 1 ,., L,t-.. ,_mr_ L IV need to keep the exclusivity focused "where " -_ it has 

value to your company. In tb _ ' .... t._^^ : ..... . .... _..... _...... ,............ :2 ^_ 7-: " - r :...... m. 

IiC-":-._ i--_'..:.... .,_'. ....... ''.'_ . 2....... I^'^4 tn rlr;nlee_*,1_al_c, ever 

elivered, the exclusivity 

have replaced the Year 

term could be extended indefinitly, thrczgh _ aetie_'z,of a_.ompmay. 

1, Year 2, etc, with acutal dates. Our feeling is that once the system is 

The 

ssignment of dates places the term into a real time context. _ 

Lastly, we have replaced the best price and conditions requirement with a reference to Exhibit B 

which is our quotation for the system 


00009 


-A0441 - 

Page ID ' _ I 

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Case 2:10--cv-07678-JFW.-DTB Document 65-6 

#: 1333 

FUTURELOGIC, 


INC, 

www.futurelogicinc.com 

425 E. Colorado St. Ste 670 


(818) 244-4700 fax: (818) 244-4764 

Intellectual Property 


Add this sentence to the end of the Intellectual Propert3, section: 

All such jointly owned Intellectual Property shall be available to the both parties to use, sell or 

transfer without limitation or compensation, provided that such use, sale or transfer does not violate 

the exclusivity provisions of this Agreement. 

Exhibit A 

Exhibit A would include a functional specificaiton of the System. Exhibit A should also indicate that 

specification can be ammended by mutual written consent so that as the specification evolves ow:r 

time, that the Agreement can be kept current. 

E_hibit B 

See the included quotation on the following pages which represents the latest quotation. Exhibit B 

should also indicate that quotation can be ammended by mutual written consent since the final 

requirements are stiU somewhat in fiux. >_ _t_ i_ _,,I_ [ _ I¢",_i_"-- 


00010 


-A0442- 

FUT00037350

Case2:10-cv-07678-JFW_DTBDocument#: 165-6334 Filed10/07/11 Page6 of 9 PageID : I 


President 


425 East Colorado Street; Suite 670 

Glendale, California 91205 

lip ATLANTA, GEORGIA 

ADDRESS REPI.Y TO I 

P. o. DRAWER 1734 

_. August 25, 1999 ^T_,.T,,. _ _o3o, 

Re: Coupon Printer System 

Dear Mr. Meyerhofer: 

This letter sets forth the understanding of Futurelogic, Inc. (hereinafter referred to as 

"Futurelogic") and The Coca-Cola Company (hereinafter referred to as "Coca-Cola") regarding 

the development of a coupon printer system for application with Coca-Cola vending machine:;, as 

described in the attached Exhibit A (hereinafter referred to as the "System"). Coca-Cola and 

Futurelogic agree to work together on any design reviews of the System. 

Warranties 

Futurelogic warrants, to Coca-Cola and its designees, the following: 

(i) 

(ii) 

it has the experience and ability in the fields necessary to perform all required services 

with a high standard of quality; 

services will be performed in a workmanlike and professional manner and all services, 

equipment, materials and reports furnished will be as represented by Futurelogic.,r,_ 

r ._ %14 ' ' - 

L_ 

(iii) it has the right to enter into and fully perform this Agreement, and no service, materials or 

reports furnished to foca-Cola wil ! in any way infringe upon or violate any applicable 

law, role or regulation, any contract with a third party or any rights of any third person, 

including, without lifi_tation, rights of patent, trade secret, trademark or copyright; 

(iv) the System will be _f_, free from___defects in material and workmanship, _d 

(v) that at th_of_e Sys_and quasi-legal 

requirem_ations governing the manufacture, sale and use 

of the S__is tobe sold; and 

99230(1053 \', 


00011 


-A0443- 

404 G76-ZI;._ I - ! 

FUT00037351 

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Case 2:10-cv-07678-JFW-DTB Document65-6 Filed 10/07/11 Page 7 of 9 Page ID 

#: 1335 

August 26, 1999 

Page 2 

Exclus!viW / 

Futurelogic agrees not to mal_e, have made, use, or sell, directly _-t_ license others 

to do the same, the System, _r -_4" fi-L_-'-_en_;_._ ,_r L'r..Frc,v,;;;._ntc _'z t_3x_'_.,,J_xcept for and 

to Coca-Cola and its designees for a period of five years from commercl"atizatioffof the System, 

provided Coca-Cola or its designees purchase the following amounts___l_:the years immediately 

following first commercialization of the units: 

In Year 1_ 

In Year 2 - 5,000 units 

In Year 3 - 5,000 units 

In Year 4 - 5,000 units. 

0 It.. 

lot-. 

IO¢._ 

The foregoing volumes are conditions for exclusivity and are n, _mll_ltments to purclaase. 

In exchange, to the extent Coca-Cola obtains patent protection on the System developed 

hereunder, Coca-Cola [_rants Futureln_ic an exclusive license to make the System, for uses 

within the United States, for a period of five (5) years from commere.izliTztion_but only for 

Company and its designees. This license is conditione_'duupon the System being _l 

quality, being available u_a_r *he he_t terms and condition_/;nrl,d;no d_live_*A n,q,.,_._,_,._._ 

t_Futurelogic'_to prove'the Sy_h terms,=_"--_ola, its_a_i'es, " 

_p_or vend?rs will be free to purc_a_such prod_t_. 

thebet_e_',_ and_'_.b_such third p_,andsuehpu_c_eshahno_\ 

ons ch s 

Intellectual Property 

In this Agreement, the term "Intellectual Property" means all works, including literary works, 

pictorial, graphic and sculptural works, architectural works, works of visual art and any other 

work that may be the subject matter of copyright protection, advertising and marketing concepts; 

trademarks; information; data; formulas; designs; models; drawings; computer programs, 

including all documentation, related listings, design specifications and flowcharts; trade secrets, 

and any inventions, including all processes, machines, manufactures and compositions of matter 

and any other invention that may be the subject matter of patent protection and all statutory 

protection obtained or obtainable thereon. 

Any Intellectual Property made or developed, or patent applications and patents filed or owned 

by or licensed to a party hereto prior to the effective date of this Agreement, shall continue to 

belong to such party and shall notbe affected by this Agreement. All Intellectual Property 


00012 


-A0444- 

FUT00037352

m 

August 26, 1999 

Page 3 


#:1336 

developed hereunder, made solely by either party, shall vest solely with the develbping party and 

all Intellectual property joir_tly developed hereunder sl_l_ be jo_rltly owned by bo_ parties. 

Trademarks 

Coca-Cola asserts and Futurelogic recognizes that The Coca-Cola Company is the owner of 

certain registered trademarks, including, but not limited to, Coca-Cola, Coke, Coca-Cola Classic, 

the contour bottle shape, Coca-Cola light, diet Coke, Cherry Coke, Fanta, Sprite, TAB, Fresca, 

Simba, Santiba, Mr. PiBB, Mello Yello, Ramblin', Minute Maid and Cappy. Nothing contained 

nor resulting from this Agreement shall give Futurelogic any interest or rights in trademarks of 

Coca-Cola. In addition, Futurelogic agrees not to manufacture, use and/or sell any article oi' 

articles bearing said trademarks in any way except as approved in writing by Coca-Cola. 

Furthermore, except as otherwise agreed upon in writing, upon expiration or termination hereof, 

Futurelogic agrees not to make any use of any of the trademarks of Coca-Cola. 

Confidentiality 

Coca-Cola and Futurelogic acknowledge that this Agreement creates a confidential relationship 

between Coca-Cola and Futurelogic. That confidential relationship is the basis on which either 

party has disclosed and may in the future disclose ("Disclosing Party") to the other ("Receiving 

Party") commercially valuable, proprietary, confidential information pertaining to the services 

and equipment provided for in this Agreement. Such information shall be designated 

confidential, or if orally disclosed, confirmed in writing as confidential within thirty (3.0) days of 

such disclosure. The Receiving Party shall hold such information in strict confidence, and shall. 

neither disclose the same to any third party nor use it for purposes other than providing services 

/rod/or equipment hereunder, without the Disclosing Party's prior written consent. This secrecy 

obligation shall not apply to: 

a. Information which is, or subsequently may become generally available to the 

public as a matter of record through no fault of the receiving party; 

b. Information which the receiving party can show was previously known to it as 

a matter of record at the time of receipt; 

c. Information which may subsequently be obtained lawfully from a third party 

who has obtained the information through no fault of the receiving party and 

without any restriction of confidentiality; 

d. Information which may subsequently be developed by the receiving party 

independently of any disclosure from the disclosing party hereunder; 


00013 


-A0445- 

FUT00037353 

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; , .;,_JCase2:10-c@07678-JFWLDTB D0cument65-6 'FiledlOi071"il Page9of9 PagelD .-i 

I ./ - ' " ' .: #:1337. " : ", ' 

ll 

.i ./ e. Information which is disclosed to a third party by the discl.osing pagy; or by a • . . .ii: ).: 

:.,,/ division, subsidiary or affiliate of the disclosing party without a corresponding , ' " ' 

II ?/ obligation of confidence; or " . 

"] f. Information which is required to be disclosed pursuant to the requirement of a : 

I / _ government agency or by operation of law subject to prior consultation with the 

disclosing party's legal counsel. 

I Severability " " 

In the event that any whole or partial provision of this Agreement is deemed unenforceable, it shall not 

invalidate the remaining whole or partial provisions of this Agreement. 

I Assignment " 

I Neither party will assign or transfer this Agreement or any interest therein, except either party may 

assign all rights and obligations to a wholly owned subsidiary or corporate affiliate after notice to the 

other party. 

I .Entire Agreement 

This Agreement constitutes the entire agreement between the parties regarding the development of the 

I System on a worldwide basis. 

Applicable Law 

I The validity, interpretation and performance of this Agreement shall be governed and construed in 

accordance with the laws applicable to contracts to be performed in the state of Georgia, U.S.A. 

If this letter correctly sets forth our understanding regarding the System, please date and sign both 

I copies and return one copy to me. 

Sincerely, ................ 

Assistant Vice President & Director, •:" :',._." :":":': 

I . Engineering " ::::::::::'::::: 

Agreed and Accepted 

p 

I this day of 1999. 

Futurelogic_ Inc. 

I By: . 

l 

Authorized Representative 

/la "'- 

I 992300053 " ""; • ." 

I Confidential-Outside Counsel ........ ' FUT00037354 

Highly Only 

00014 

I FutureLogic's Summary Judgment Exhibit No. 25 

-A0446-

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D 

Case 2:10-cv-07678-J FW -DTB Document 65-7 Filed 10/07/11 Page 1 of I Page ID 

#: 1338 

PSA-66-VM Communications Protocol 

Subject: Product Code: 

MDB and communications protocol for the PSA-66-VM printer PSA-66-VM 

Doc: PSA-66-VM MDB and communications.doc 

Scope: 

1. 

2. 

3. 

4. 

5. 

6. 

7. 

Hardware specification for communication interfaces 

Protocol layer for MDB interface communications 

Command set for MDB interface communications 

Protocol layer for RS232 interface communications 

Command set for RS232 interface communications 

Format of the coupon control data package 

Download sequence for coupon data package 

Supersedes: 

Revision 2-23,2000 

Related Documents: Revision Date: 

-na- 3-01-2000 

Recent Revision History: 

2-04-2000 (a) added download/upload flow control, (b) added date and time format information for 

timekeeping, (c) modified coupon data base record to increase the maximum amount of 

coupons printed in a promotion to 64,534. 

2-23-2000 (a) separated coupon template packet into a separate packet for Flash programming 

purposes, (b) referenced graphics packets for coupon formatting control, (c) increased 

maximum packet size to 1024 bytes; (d) modified handshaking control 

3-01-2000 (a) modified time set command, (b) added time polling command, (c) eliminated BIT 7 

end of packets flag 

3-16-2000 modified maximum packet back to 1000 bytes maximum 

Author: 

Eric Meyerhofer 3-01-2000 

Eric Meyerhofer 3-16-2000 

Checked By: 


Any party receiving this document is hereby notified that it is 

not a public document. This document contains 

PROPRIETARY and CONFIDENTIAL information of 

Futurelogic, Inc. Disclosure of this document to other 

parties is controlled by non-disclosure agreement with the 

disclosing party. 

00015 


-A0447- 

FL0001781

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FUTURELOGIC, INc. 

Mr. Simmy Ahluwalia 

Commercialization Engineer, Cold Drink Systems 

The Coca Cola Company 

P.O. Drawer 1734 

Atlanta, GA 30301 

Dear Simmy; 


#: 1339 


1 am _nding you a revised quolatiou that addresses the evolution of the CCUSA prinler. This is the same printer 

as beIbre, bat includes the added options that were rcqncsted (note that we have assigned a new part number lbr 

the printer). From our discussions, we are quoting a unit with the following features: 

1. Meets fl_c specification "CCIJSA Coupon Printer Technical Specification", with the options listed 

below superceding the specilieation. 

2. 65ram media size, using fhn-fo[d stock (this is the prolYer .size for the bill accepters); 

3. Manual paper culter!tear operation; 

4. Real-time clock calendar, 

5. 24VAC @ 4.5A input power handling capability; 

The selection of the AC input power source has resulted in additional c;ireuit_', testing, and regula'/o_, agency 

lees - the quotation has been updated to reflect these cost impacts, "['he l'_s relating to the prolotyl:ze NRF, will 

be billed in 2 phases half now and half on deliver' ofthe 2 beta nails iueluded in the NRE charges. ]'lie 

summa_" of the production unit cost impacts, tot the options chosen, is shown below and updated in the unit 

pricing: 

Manual cutter/tear option: - $15,00 

RcN-time clock calendar: + $ 8.00 

24VAC input power: + S14.50 

Total Cost Delta: + $ 7.50 

In order to keep the project moving forward, a purchase order, speci_,ing the prototyping lees, should now be 

issued, so that we may bill the first phase. The second billing phase wilt occur atter the begimfing of the year. 

Please refer to the Prototype Disclosure on the last page, as it explains our company's pelicy on prototypes. An 

appropriate wording tbr the item de_riptions in the I_O would be: 

Line Item 1: 

"Proto_'ping fees, ]_A-66-CC -. custom thennal printer. Fees include delivels, of 2 alpha and 2 beta prototype 

milts. Prototypes will comply with the specification - CCUSA Coupon Printer Technical Specification, and are 

subject to the terms and conditions of Futurelogic's Prototype Fees, Rights. and Responsibilities Di_losure. 

Line Item 2: 

"Additional PSA-66-CC prototype winters" 

If you have any questions, please call $colt Shimmin or mysel£ Thank you. 

13est regards, 

Mark Meyerhol_r 

President 

CONFIDENTIAL 

00016 


-A0448- 

FL0023292

Case 2:10-cv-O7678-J FW -DTB 

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S/Coke 

***************** tcl0e.con 

User: Eric Date: 

Checked in S/Coke 

Comment: 


#: 1342 

6/05/00 Time: 4:38p 

corrected automatic paper loading problems; printer will always load 

paper consistantly upon power up without paper. 

***************** tc10e.a96 ***************** 

User: Eric Date: 6/05/00 Time: 4:38p 


Comment: 



******e********** Jsrtc]0e. Jsr ***************** 



Comment: 



***************** rxtxMDB.isr ***************** 



Comment: 





Comment: 



***************** 2xxxBIOS.swr ***************** 



Comment: 



***************** Version 45 ***************** 

Label: Version 0.0.0.1.2 


Labeled 'Version 0.0.0.1.2' 


Beta version. Prevents buffering of coupons during a paper 

out or head up condition. 

***************** tc10e.a96 ***************** 



Comment: 

Eliminated buffering of coupons during a paper out our head up 

condition. 

***************** COKE.mod ***************** 



Comment: 


condition. 

***************** rxtxMDS.isr ***************** 



Comment: 



OOO19 


-A0451 - 

FUT00109005


#: 1343 

condition, 

***************_* DOTCOUNT.TBL ***************** 


User: Eric Date: 4/20/00 Time: 8:38a 



Beta release 0.0.0.0.9 

***************** escp2 0e.ifl ***************** 



Labeled 'Version 0.0.0.0,9' 








**_*****e**eeee** escp20e.swr _eee_*ee_ee*_e**e 











***************** generic.tkt ***************** 



Labeled 'Version 0.0.0,0.9' 




User: Eric Date: 4/20/00 Ti_: 8:38a 




***************** isrtcl0e.isr ***************** 



Labeled 'Version 0,0.0.0.9' 


Beta release 0.0,0.0.9 

***************** keymix2.dev **_**_,e_*****_** 


User: Eric Date 4/20/00 Time: 8:38a 

Labeled 'Version 0,0.0.0.9 




User: Eric Date 4/20/00 Time: 8:38a 

Labeled 'Version 0.0.0.0.9 




00020 


-A0452- 


FUT00109006

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*************_*** MULX.MAP 







#: 1344 

4/20/00 Time: 8:38a 

e****e**e*ee**w** opr sys.swr ****_*********_** 




Label comment_ 


***************** prgf at.a96 ***************** 

[,abel: Version 0.0.0.0.9 




Beta release 0.0.0.0,9 

***************** putchar0.swr ***************** 






***************** PUTTXMDB.SWR ***************** 






***************** rlockl2x.swr ***************** 



Labeled 'Version 0.0.0.0,9' 



***************** ROT 180C.C ***************** 



Labeled 'Version 0.0.0,0,9' 



***************** rxtxMDB.isr ***************** 

Label: Version 0.0.0.0,9 





***************** standard.uif ***************** 






***************** tcfgiMDB.swr ***************** 

Label: Version 0.0.0.0,9 





Highly Confidential- Outside Counsel Only 

00021 


-A0453- 


FUT00109007


#:1345 

***************** tcl0.tbl ***************** 






***************** tc10e.a96 ***************** 






***************** tcl0e.con ***************** 






***************** tclbr0.tbl ***************** 






***************** teststr.tbl ***************** 






***************** TMPREG.A96 ***************** 






***********_***** xbcode0.tbl ***************** 





Beta release 0,0.0.0.9 

***************** 2000.a96 ***************** 





Beta release 0.0,0.0.9 

***************** 2000kc.btm ***_************* 






***************** 2000KC.hwr ***************** 



Labeled 'Version 0.0,0.0.9' 



***************** 2CKBIOS,swr ***************** 


00022 


-A0454- 


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#: 1346 


User: Eric Date: 4/20/00 Time: 




*******_**_**_*** 2xxxBlOS.cal _**************** 



Labeled 'version 0.0.0.0.9' 



***************** 2xxxBIOS.mem ***************** 






***************** 2xxxBIOS.RG ***************** 






***************** 2xxxBIOS.swr ***************** 






***************** 2xxxbios.tbl ***************** 






***************** at29c0.fk ***************** 






***************** at29c0.fsw *********e******* 






***************** barprep0.swr ***************** 



Labeled ,Version 0.0.0.0.9' 



***************** CI28SCAN.A96 ***************** 



Labeled 'version 0.0.0.0.9' 



***************** clkRout.a96 .***************** 



00023 

Filed 10/07/11 

8:38a 


-A0455- 

Page 5of 9 Page ID 

FUT00109009






_***********_**** COKE.mod 






***************** COKE.uif 






***************** tcl0e.con 



Comment: 

Document 65-9 

#: 1347 

4/20/00 Time: 

******e**w*e***** 

Filed 10/07/11 

8:38a 

4/20/00 Time: 8:38a 

4/20/00 Time: 8:38a 

4/20/00 Time: 8:38a 

Development check-in. Current release level is 0.0.0.0.9 

***************** mdb.flg ***************** 



Comment: 


***************** rxtxMmB.isr ***************** 



Comment: 


********_******** tel0,tbl ***************** 

User: Erie Date: 4/20/00 Time: 8:38a 


Comment_ 


***************** tc10e.a96 *_*********_***** 



Comment: 


********_*_**_** at29c0.fk ***_************* 



Comment: 

Development check-in. Curren_ release level is 0_0.0,0.9 



Comment: 


***************** isrtcl0e.isr **************_** 



Comment: 


*_*************** 2x-xxBIOS,swr ***************** 



Comment: 


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#: 1348 


User: Eric 

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User: Eric 

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User: Eric 

Added teststr.tbl 

User: Eric 

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User: Eric 

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User: Eric 

Added tc10e.a96 

User: Eric 

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User: Eric 

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User: Erie 

Added standard.uif 

User: Eric 

Added rxtxMDB.isr 

User: Eric 

Added ROT_I80C.C 

User: Eric 

Added rlockl2x.swr 

User: Eric 

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User: Eric 

Added putchar0.swr 

User: Eric 

Added prgf at.a96 

User: Eric 

Added opr_sys.swr 

User: Eric 

Added MULX.MAP 

**********e****** 

Version 44 ******_********** 

Date: 3/16/00 Time: 10:10a 

Version 43 ***************** 

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Version 42 ********4******** 

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Version 27 **=********_***** 


00025 


-A0457- 


F UT00109011

Case 2:10-cv-O7678-JFW-DTB Document 65-9 Filed 10/07111 

#: 1349 

User: Eric Date: 3/16/00 Time: 10:iDa 

Added mdb.flg 

User: Eric 

Added keymix2.dev 

User: Eric 

Added isrtcl0e.isr 

User: Eric 

Added Hdwrerr.swr 

User: Eric 

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User: Eric 

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User: Eric 

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User: Eric 

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User: Eric 

Added escp2_0e.i[1 

User: Eric 

Added DOTCOUNT.TEL 

User: Eric 

Added COKE.uiE 

User: Eric 

Added COKE.mod 

User: Eric 

Added clkRout.a96 

User: Eric 

Added CI28SCAN.A96 

User: Eric 

Added barprep0.swr 

User: Eric 

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User: Eric 

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User: Eric 

Added 2xxxbios.tbl 

Version 26 ***************** 

Date: 3/16/00 Time: 10:10a 

Version 25 ***************** 

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***************** Version 7 


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***************** Version 6 


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User: Eric 

Added 2CKBIOS.swr 

User: Eric 

Added 2000KC.hwr 

User: Eric 

Added 2000kc.btm 

User: Eric 

Added 2000.a96 

User: Eric 

Created KO 

Comment: 

Coca-Cola MDB project 


#: 1350 

3/16/00 Time: 10:09a 

3/16/00 Time: 10:09a 

3/16/00 Time: 10:09a 

3/16/00 Time: 10:09a 

Version 5 ***************** 

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Version 3 *******_********* 

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Version 2 ********_******** 

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Version 1 *'******_********* 


Date: 3/16/00 Time: 9:57a 

00027 


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From: 

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To: 

CC: 

Subject: 

Attach ments: 

Eric _Wan Hsing, 


#:1351 

Scott Shimmin 

Thursday, December 09, 1999 09:01 AM 

Eric Meyerhofer; Wan-Hsing Ma 


FW: Test Criteria 

CCUSA COUPON PRINTER TEST CRITERIA.doc 

Attached is a preliminary test plan that Simmy put together for the Coke printer. Please review it, and 

let me know if you have any Concerns. Also, we need to make sure that these aspects are in place by the 

2/1 beta ship date. 

Scott 

..... Original Message ..... 

From: sahluwalia@na.ko.com 

Sent: Wednesday, December 08, 199_ 1:40 PM 

To: scottshimmin@futurelogicinc.com 

Subject: Test Criteria 

Scott, 

I've put a draft together of some test criteria that I want to expose the printer too. Really, most of 

the attached testing will benefit the beta units, but I think that we can use sections 3.1 and 3.5 with 

the alpha units. Let me know if you have any feedback. 

Simmy. (See attached file: CCUSA COUPON PRINTER TEST CRITERIA.doc) 

CONFIDENTIAL 

00028 


-A0460- 

FL0003543


#:1352 

i .0 

2.0 

3°0 

CONFIDENTIAL 

CCUSA COUPON PRINTER TEST PROCEDURE 

Pnrpose: ,Tim pt_rpose of this test is to validate the continuous printing ability of the 

Setup: 

2_1 

2.3 

2.4 

Procedure: 

3 I. 

3,2 

3,3 

3.8; 

coupon pfnter :in the Marketing Vender. 

Install aiad powtSr._p the Coupon printer in tlaefeature select bay of die Marketing 

Vender. 

Ensure tbatboth the bill validator aiad Coin mechanisin ate functioning coi-rectly, 

Ensure that the vender is at least half full of product (bottles or eans)¢ 

Use an Excel spreadsheet to document the data (see attached). 

Configure the printer template to pn:int:after e';,'ery vend selection, Depress 

each huron on the vender five times and moniior printer output, Rm_domly 

select seven buttons on the vender, depress them and monitor printer output 

Cm_figure the printer template to print on Coca-Cola Classic only. Depress 

a total of 20 selection buttons, alternating each button with a Classic vend (i.e. 

every.other button will be Classic). 

Configure the printer templaie to print after eveD' thitd vend selection. 

Monitor the printer/coupon output after thirty random buttons are depressed (i.e. 

ten sequences}. 

Configure the printer template to print on the 25t_ vend selection, only. 

perform this once bt t afte_pt 

engage. 

50 other ,,_e:nds to eOsure that the printer does not 

3.5 WRh the printer in template 3.1 above, pe,rf0rm the following: 

3.5-1 By inserting a. $1.00 in the dollar bill validator each time, i,andomly 

select 20 buttons to depress and vend (set the vend price to $i .00).' 

3.5.2 B_" inserting .50 cents inthe coin mechanism each time_ perform the 

same number of vends as in .3.5.1 above (set the vend price to $0_50). 

3.5_3 Insert .50 Cents inihe coin, mcchauism, make a vend sel_cttoa, bnt DO 

NOT remove the coupon. Perform ten vend selections following this 

same criteria. 

4.0 Perform each function above (steps 2-3) in the following conditions: 

4.1. 32_F with 5% relative:humidly, (use walk-in refrigerator/cooler) 

4.2 90°F with 65% reiati:ve humidity 

4.3' 1.40_ with 75% relative humidity (use l_cating lamps if necessary) 

00029 


-A046'1 - 

FL0003544 

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Case 2:10-cv-O7678-JFW-DTB Document 65-10 Filed 10107/11 Page 3 of 3 

#: 1353 

5.0 Perform the'same steps as oudined lit 3.1, but modify the testper fhe following: 

5.1 0perate.the printer at +10% of it's rated voltage. 

5.2 Operate the printer at,-t0% ofit-'S rated voltage, 

6,0 After eacia operation above, monitor'the f'011owing:jams, multiple dispenses, varlation in 

pr.iiati!lg_time_, clarity o.fthe print, ease of obtaining a coupon, etc..,..Note 

abnormalities. 

ally concerns or 

00030 


-A0462- 

Page ID 

FL0003545

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From: 

Sent: 

To: 

CC: 

Subject: 

Hi Simmy, 


#: ! 354 

Scott Shimmin 

Thursday, December 09, 1999 09:10 AM 

'Simmy Ahluwalia' 

Eric Meyerhofer; Wan-Hsing Ma; Mark Meyerhofer 

RE: Test Criteria 

I received the test criteria document from you. I have forwarded it to engineering, the only comment I 

would have at this time, is on the random vend aspect (section 3.3 and 3.4). The way we have specified 

this is "random," in other words, for section 3.3, over a sample of say 90 coupons, only 30 would be 

printed, but not necessarily every third vend would yield a coupon. The same is true with section 3.4, 

with respect to one in 25, for this you may want to specify 100 vends, and that approximately 4 coupons 

should be printed, my probability and statistics is very rusty, so I'm not sure what the standard 

deviation would be for such a test. Obviously the larger the sample, the smaller the deviation. 

Scott 


From: sahluwalia@na.ko.com 

Sent: Wednesday, December 08, 199_ 1:40 PM 

TO: scottshimmin@futurelogicinc.com 

Subject: Test Criteria 

> 

Scott, 

I've put a draft together of some test criteria that I want to expose the printer too. Really, most of 

the attached testing will benefit the beta units, but I think that we can use sections 3.1 and 3.5 with 

the alpha units. Let me know if you have any feedback. 

Simmy. (See attached file: CCUSA COUPON PRINTER TEST CRITERIA.dec) 

CONFIDENTIAL 

00031 


-A0463- 

FL0019004

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.s._--- FUTURELOGIC, INC. 

Document 65-12 

#: 1355 

Printer Model": PSA.66-VM =(Coca-Cola) 

Printer Serial Number:; 

Vending l_lachine Manufacturer: 

Location;. 

CONFIDENTIAL 

Name (DriverErech.): 

Date_ 

Nature of Problem (be specific): 


Model : 

Prior to attempting to resolve the problem, note the following: 

ls there paper in the chute? oYes [aNo 

l's there paper loaded in the printhead? ayes DNo 

is the vendingmachine operating normally (does it vend)? oYes 6No 

Status,of Red Light on die front of tile printer: ta0n t_Off' t_Rashing 

Status &Green-Lights on the front of the printer: DOn n0ff nFlashing 

Status of the Error (Red or Orange) Light on the rear of the printer: o0n o0ff DFlashing 

Status of the Status (Green) Light on the rear of the printer: _.0n a0ff c.Flashing 

Position of the Head-up (Blue) Lever on the. Side of the printhead: _Open (down) =Closed (up) 

Press and '.Hold the Fi_ed button on the back of flae printer, did the printer advance a sheet of 

paper? eyes DNo 

What, if Anything, Were You Able to do to Return the .Printer Normal 

Operation (be specific)" 

if Returning, RMA# 

REV: A PAGE 1 OF1 

00032 

FutureLogic's Summary Judgment Exhibit No, 31 

-A0464- 

Page ID 

FL0002932

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From: 

Sent: 

To: 

CC: 

Subject: 

Attachments: 

Simmy, 


Scott Shimmin 

Tuesday, May 09, 2000 04:55 PM 

'sa htuwalia@na.ko.com' 

Mark Meyerhofer; Eric Meyerhofer 

RE: Coupon Vendors in field. 

KO Problem Reportdoc 

Filed 10107/11 Pagelof2 PagelD 

Per your request, we are shipping two units to CCE, under _#9960-0004, please make sure that when the 

dust settles, CCE ships back two units, under this RMA number. 

We have been able to repeat the bug that you reported last week, where under some conditions the printer 

fails to auto-load, I will let you know as soon as I have some further information with respect to a 

resolution on this issue. 

With respect to the paper jam problem, we expect to get parts in, hopefully tomorrow, that are intended 

to resolve this issue. If the parts work, a field upgrade should be pretty straightforward, the part in 

question can be swapped out by removing two nuts, removing the part, installing the new part, and 

replacing the two nuts. I will let you know how it looks, as soon as I get the new parts. 

With respect to any problems found in the field, I am attaching a copy of the "Problem Report" form that 

I created, please use this for any reported problems from the field. Also, please attach a completed 

copy of the form to any RMA units. 

With respect to the problems noted below, we will try to repeat these failures, any additional 

information that you can forward to us will be helpful. 

Scott 


From: sahluwalia@na.ko.com [SMTP:_ahluwalia@na.ko.com] 

Sent: Tuesday, May 09, 2000 7:14 AM 

To: scottshimmin@futurelogieinc.cem; mark.meyerhofer@futurelogicinc.com 

Co: jhildenbrandt@na.ko.com; lwandrick@na.ko.com 

subject: Coupon Vendors in field. 

Guys, 

Following is feedback from an audit conducted yesterday on the printers 

installed in the Cincinnati area. Due to the intermittent reliability problems 

of the printer not functioning repeatedly, Cincinnati has asked me to come back 

up and support their troubleshooting needs. Thus, I'm back in Cincinnati 

tomorrow and Thursday. 

The one unit below with both the solid lights on concerns me because this is the 

second or third unit exhibiting this feature. It is apparent that this unit 

will have to be replaced. Scott, can you please send one, actually two, units 

to the Wilmer St. location to the attention of Jim Burns for tomorrow morning 

receipt? 

What bugs me even more is that once the printer is operating, some time later it 

just stops printing until the unit i_ powered down (i.e. reset). This problem 

needs to be addressed ASAP!!! 

Also, they have had some problems of coupon paper jamming, thus we need a field 

retrofictable solution to ensure that this does not compound the problems 

already being seen. 

CONFIDENTIAL 

00033 


-A0465- 

FL0002930

Case2:10-cv-07678-JFW-DTB Document65-13 Filed10107/11 Page2of2 PagelD 

#: 1357 

The big concern here is that CCE does not want to see a proliferation of service 

calls relating to the printer. They are approaching the summer months which is 

the season for elevated service calls relating to cold drink equipment 

performance (i.e. refrigeration). Thus, their teehs, are going to be tied up 

servicing this equipment. My feeling is that if a high incidence of service 

calls are being performed for these printers, then CCE may elec_ to stop the 

test very prematurely and of course this won't bode well for FLI's future 

business. 

So, please come back to me with an action plan. 

Thanks! 

...................... Forwarded by Simmy Ahluwalia/US/NA/TCCC on 05/09/2000 

09:57 AM ........................... 

jburns@na._okecce.com on 05/09/2000 09:09:03 AM 

To: simmy Ahluwalia/US/NA/TCCC@TCCC 

cc: Mark Mastrilli/US/CCE@CCE, Kenneth Hart/US/CCE@CCE, Mike 

Harrod/US/CCE@CCE, Rob Kaufman/US/CCE@CCE, Doug Becker/US/CCE@CCE 

Subject: Coupon Vendors in field. 

Gentlemen, Here is a recap of what Ken Hart and myself come accross yesterday 

while performing the P.M. checks on the coupon vendors at these locations listed 

below. If you have any questions please give me a call, We will be back out 

today performing checks as well. Thank you. 

Avon - cafe, no problem found, working fine. 

Avon - Hastey Tastey, found both lights solid on printer, powered down printer 

and powered back up, did not work. unplugged printer. 

Avon - 1 floor breakroom, would not vend or print coupon, powered down and 

powered back up and was working when we left. 

cinti Museum - tech. had service call earlier on vendor for not disp. product or 

coupons, we arrived and powered down and back up and was working fine when we 

left. Mike Harrod arrived 30-45 minutes after we had left and found that vendor 

was not printing coupons. 

Riverside IGA - found printer not printing coupons, powered down and back up and 

was working when we left. 

St. Luke East - Cancer Center, was working fine when we arrived. 

St. Luke East - Cafe, no coupons, powered down and back up and was working fine 

when we left. 

St. Luke East - E.R., no coupons, powered down and back up and was working fine 

when we left. 

St Luke East - Garage, was working fine when we arrived. 

CONFIDENTIAL 

00034 


-A0466- 

FL0002931

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To: 

CC: 

Subject: 

Simmy, 


_: ! 358 

Scott Shimmin 

Monday, May 01, 2000 09:26 AM 

'sa htuwalia@na.ko.com' 

Eric Meyerhofer; Mark Meyerhofer 

RE: Initial Observations 


We will do some investigation here, to see if we can reproduce the problems that you were seeing on the 

installed machines. I spent quite a bit of time on Thursday, trying to reproduce the problem that you 

mentioned on voice mail, and repeated below, regarding the failure of the paper to feed. I was not able 

to reproduce the problem. One thing I did not try is leaving the printer on for a long period of time, 

with no paper, I will plan to set that up tonight, and will check ill the morning to see if I can 

reproduce the problem. 

With respect to the printer that you are having problems with, please return it under the open R_, as 

this will get us even on printers, and we will research the issue and get back to you. Mark is 

currently investigating the previous quality issues that you reported. 

Scott 


From: sahluwalia@na.ko.com [SMTP:sahluwalia@na.ko.com] 

Sent: Sunday, April 30, 2000 8:09 AM 

To: scottshimmin@futurelogicinc.cem; mark.meyerhofer@futurelogicinc.com 

Subject: Initial Observations 

Guys, 

We visited two of the 9 accounts for printer operation on Friday. There were a 

total of 8 printers evaluated. _en we visited the first two venders, both 

printers exhibited the solid green and red lights ON from outside of the vender. 

We opened both machines, and tried to troubleshoot as to why both lights were on 

solid from the outside as well as the inside of the machine. On the one vender, 

I managed to cycle power to the vending machine as well as the printer, and 

finally I managed to get the red light on by itself (without paper). The other 

printer would not display a red light only. So, I pulled this printer and 

replaced it with another one. 

The printer that I pulled turns out to be the same one that I had sent back to 

FLI from Coke HQ .... this one exhibited the same failure mode (solid red light on 

all of the time). Except now both the green and red lights are solid and are on 

all of the time. My first question is was this printer even evaluated at FLI 

for correct performance? 

The remaining six printers proved to function fine. However, the one thing that 

I noticed on nearly all of the printers is that once I try to load paper into 

the path, for some reason the sensor does not pick up the fact that the paper is 

there, and consequently does not try to pull the paper through. Basically, I've 

had to cycle power to the printer_ lift the blue lever up and down several 

times, disconnect _DB, and finally the motor pulls the paper through .... I'm 

confused as to why I have to go through this process???? My sense is that for 

some reason when there is "downtime", and no operation of the printer for a 

period of time, the printer does not operate correctly. Please provide me with 

your feedback on this matter. 

We're planning on visiting six more accounts on Monday, and then the final 

account on Tuesday. I will keep you posted on what I see. 

Simmy. 

CONFIDENTIAL 

00035 


-A0467- 

FL0003579

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From: Scott Shimmin 

Sent: Thursday, May 11, 2000 04:48 PM 

To: Mark Meyerhofer 

Subject: FW: Feedback on Visit 

FYI 


From: sahluwalia@na.ko.com [SMTP:sahluwalia@na.ko.com] 

Sent: Thursday, May ii, 2000 4:27 PM 

To: mharrod@na.cokecce.com 


Cc: mahahn@na.cokecce.com; jburns@na.cokecce.com; mmastrilli@na.cokecce.com; mameiss@coinco.com; 

mstclair@coinco.com; scottshimmin@futurelogicinc.com; eric.meyerhofer@futurelogicinc.com; 

lwandrick@na.ko.com; jhildenbrandt@ne.ko.com; hutz@na.ko.com; pphillips@na.ko.com; rwhigham@na.ko.com; 

mshively@na.ko.com 

Subject: Feedback on visit 

Mike, 

I have visited most of the coupon printer accounts (with the exception of Hillenbrand) over the past 

couple of days to witness the problem that you guys are seeing. 

The "printing", and then "not printing" seems to be the most common theme. I did make a change to most 

of the venders which I thought would correct this problem, but when we re-visited some of the accounts, 

the problem was still there. 

Thus, in discussions with Coinco, the manufacturer of the board in the vending machine, they feel that 

they can eliminate this problem with a software upgrade to the board. This will take place on Monday 

and Tuesday of next week. A representative from Coinco will work with both Matt and Jim Burns to hit 

every coupon printer/vender. They will also revisit some of the accounts on Tuesday to ensure that the 

problem has been fixed. 

We did replace one printer at Tri-County mall which exhibited solid lights on constantly, and we could 

not determine a field fix. This unit will be sent back to Futurelogic for evaluation. We were able to 

print a "winner's" coupon at Withrow High School for 1 in 24, but were unable to repeat this promotion. 

Thus, Matt has sent his coupon files for this account to Futurelogic to evaluate, and hopefully we will 

get a new file early next week to upload into these venders. 

Regarding the coupon paper jamming, Futurelogic is aware of the problem, and is preparing a field fix. 

I should have more information on this topic early to mid next week. 

I'll stay in close contact with Matt and Jim on how things progress next week. 

Simmy. 

CONFIDENTIAL 

00036 

FutureLogic'S Summary Judgment Exhibit No. 34 

-A0468- 

FL0003590

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#:1360 

Simmy Ahluwalia [sahluwalia@na.ko.com] 

Wednesday, June 21,2000 2:30 PM 

Matthew Hahn; Mike Harrod; Mark Mastdlli; Jim Bums 

Lisa C. Wanddck; Anita S. Green; Alexander Spradling; Mary Shively; 

scottshimmin@futurelogicinc.com; mameiss@coinco.com; Hans J. Utz 

Initial Reliability Test Results 

We have just completed our initial reliability results with the coupon printer in our lab 

here in Atlanta. The results were excellent. Three primary tests were run: the first 

test was run to gauge printer reliability after a set number of vends; the second test was 

run to gauge coupon frequency and consistent reliability, and the third test was run to 

gauge coupon frequency specifically. 

Our first test consisted of setting up the St. Luke promotion thus 

printing a coupon on every vend. We completed a total of 500 vends with 

no technical issues. The breakdown of the promotion was: 253 coupons 

printed with the BP promotion, and 247 coupons printed with the Cinci 

Museum promotion .... almost 50/50. 

The second test consisted of setting up the Hillenbrand promotion. A 

total of 150 vends were performed here with again no technical issues. 

The breakdown of this promotion was: 57 coupons printed with the Cinci 

Museum $i Off Admiss., 62 coupons printed with the Day-Nite Buy a Small 

Pizza and get a 20oz. Coke for $i, 14 coupons printed with FREE 

admission to the Cinci Museum, and 17 coupons printed with FREE small 

pizza and a 20oz. Coke. 

The third test consisted of setting up the Withrow promotion. A total 

of 200 vends were performed here with no technical issues. The 

breakdown of this promotion was ii coupons printed for a FREE Medium 

Domino's Pizza. 

Over the course of the next month, we will be running additional in-depth testing designed 

to challenge the coupon printer at different environmental and operational conditions. I 

will keep you posted on those results also. 

Simmy. 


00037 


-A0469- 

FL0003905

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Case2:10-cv-07678-JFW-DTB Document65-17 Filed 10/07/11 Page 1 of 2 Page ID 

#: 1361 

Importance: High 

A]q-00002.htm (4 

K8) 

Mike Ameiss [MAMEISS@Coinco,com] 

Tuesday, June 27, 2000 7:58 PM 

'Simmy Ahluwalia'; 'Scott Shimmin - Futurelogic'; 'Eric Meyerhofer - Futurelogic' 

Mike St. Clair; Daniel Hanna; Mike Lukitsch 

RE: USD printer lock-ups 

FYI - Coinco has experienced non-volatile memory corruption in other 

controller boards with the "noisy" power environment that a vending machine represents. 

If you are having repeat h/w problems at one location, you may want to look closer at 

possible sources of noise, in addition to having the USD printer subjected to EMC testing 

for conducted and radiated noise susceptibility. Coinco tests to CISPR Class B at it 

represents a worst case scenario. Typically, domestic equipment only needs to pass Class 

A. 

I had not heard any resolve on the root cause of "both lights being on". I cannot imagine 

an MDB communications scenario that would/could lock up the peripheral and clear up after 

a power cycle/reset. If FLI is finding memory corruption (Flash, EEPROM, battery RAM), 

then I believe electrical noise should be investigated further. Thanks, Mike a 


From: Simmy Ahluwalia [mailto:sahluwalia@na.ko.com] 

Sent: Monday, June 26, 2000 7:53 ;%M 

To: Jim Burns 

Cc: Matthew Hahn; Mark Mastrilli; scottshimmin@futurelogicinc.com; 

eric.meyerhofer@futurelogicinc.com; mameiss@coinco.com 

Subject: Re: Avon .... 

Jimt 

Thanks for the feedback. Pls. have you and Matt check out this printer again, and if it 

is still giving you problems, go ahead and put one of those red cover plates in the 

feature select bay area, and have Matt mail the printer back to Futurelogic ASAP so that 

they can investigate and fix it. Matt has the address. 

Scott/Eric, 

Pls. figure out what is going on with the communication from the board to the printer such 

that the printer locks up. This was observed with the printer that I recently sent back 

to you. 

Scott, I haven't heard back from you on Matt's alpha unit ....... 

Simmy. 

Jim Burns@CCE 

06/22/2000 03:57 PM 

To: Si_ny Ahluwalia/US/NA/TCCC@TCCC 

cc: Mark MastrilIi/US/CCE@CCE, Matthew Hahn/US/CCE@CCE 

Subject: Avon .... (Document link: Database 'Simmy Ahluwalia' , View ' 


00038 


-A0470- 

FL0003906


($Inbox) ') #:1362 

WUZZZZZ uppppppppp ...... Well just got back from Avon and that machine located in Hasty 

Tasty has both lights on the printer again and will not reset. This printer may need 

exchanged again ..... Let me know, I'm on a ride-with tomorrow with a tech. Thanks, Jim 

serial # 199952ba-014444 

asset # RY99119831 


00039 


-A0471 - 

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#:1363 

Status Update 

6_2000.dc_: (21 K... 

Guys ..... FYI 

Simmy Ahluwalia [sahluwa!ia@na.ko.com] 

Tuesday, July 11, 2000 7:44 PM 

mameiss@coinco.com; scottshimmin@futurelogicinc.com 

Technical Status Report on the Coupon Printer Field Test in Cincinnati 

...................... Forwarded by Simmy Ahluwalia/US/NA/TCCC on 07/11/2000 03:43 PM 

........................... 


07/11/2000 03:42 PM 

To: Matthew Hahn/US/CCE@CCE, Doug Becker/US/CCE@CCE, Mike 

Harrod/US/CCE@CCE, Joe Papapietro/US/CCE@CCE, Jim Burns/US/CCE@CCE, 

Mark MastrilIi/US/CCE@CCE, Dan Barney/US/CCE@CCE, Betty 

Wilson/US/CCE@CCE, Mary Shively/US/NA/TCCC@TCCC, Rob 

_aufman/US/CCE@CCE, Marie CicchinelIi/US/CCE@CCE, Greg 

Rozanski/US/CCE@CCE 

cc: Roger C. Whigham/US/NA/TCCC@TCCC, David Karpan/US/NA/TCCC@TCCC, Lisa 

C. Wandrick/US/NA/TCCC@TCCC 

S_b_ect: Technical Status Repert on the Coupon _rinter Field Test in 

Cincinnati 

Please receive the attached document. 

Thanks! (See attached file: Status Update 6 2000.dec) 


00040 


-A0472- 

FL0003914

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Case 2:10-cv-O7678-JFW-DTB Document 65-19 Filed 10/07/11 Page 1 of I Page ID 

#: 1364 

To: 

FROM: 

RE: 

SUMMARY 

Distribution 


7/10/00 

Tectmical Status Report on the Coupon Printer Field Test in Cincinnati 

The field test for file 24 coupon printers in the Cincinnati area began during the week of May Ist, 

2000. Due to technical glitches associated x_fth the printer and the new controller, the first few 

weeks of the test were filled with reactive and proactive service calls. We uploaded new software 

versions to both the printer and the controller during the first week in Jtmc, and for the most part, 

any technical problems have diminished significantly. Thus, the analysis below will take into 

account service calls/problems encountered after the software upgrade. 

SERVICE ANALYSIS 

For the month &June 2000, there were three reactive service calls on the equipment/printers. Of 

these flarec calls, two were out of paper, and the other printer _xas not printing, but was fixed. 

other proactive service calls were made resulting in two printers being out of paper, and one 

where the printer was not functioning correctly, but was determined to be in proper working order 

at a later date in time. 

NEXT STEPS 

1 will publish another status update at the end of August. Matthew Hahn will be keeping a log of 

any recommended mechanical chauges to the printer and recommended software changes to the 

coupon creation process in the event the decision is made to commercialize the printer full scale. 

Distribution: CCE CC: 

Mr. Matthew Hahn 

Mr. Doug Bccker 

Mr. Mike Harrod 

Mr. Joe Papapietro 

Mr. Steve Cook 

Mr. Jim Burns 

Mr. Mark Mastrilli 

Mr. Dan Barney 

Ms. Betty. Wilson 

Ms. Mary. Shivcly 

Mr. Rob Kaufman 

Mr. Mario Cicchinelli 

Mr. Greg Rozanski 


00041 

CCNA 

Mr. Roger Whigham 

Mr. David Km9,'m 

Ms. Lisa Wandrick 

FutureLogic's Summary Judgment Exhibit No, 38 

-A0473- 

FL0003915


#: 1365 

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Simmy, 

Scott Shimmin 

Thursday, May 04, 2000 11:06 AM 

'sahluwalia@na.ko.com' 

Eric Meyerhofer; 'Matthew Hahn - CCE'; Mark Meyerhofer 

RE: Question 

I don't have an immediate answer for you with respect to the two units that failed (not jam related). I 

am assuming that these are the two printers that Matt reloaded in order to get them working. I am going 

to work on a ferm that CCE can use to report problems, that will help us troubleshoot and/or try to 

reproduce the problem here at Futurelogic. I will forward the form to both you and Matt, shortly. In 

the mean time, please provide as much detail as possible, when reporting a problem. 

With respect to the units with paper jams, I'm assuming that these jams took place in the printer 

mechanism area, behind the chute? As I mentioned to you in Cincinnati, we are aware o_ this issue. The 

units that you received were adjusted to hopefully resolve this problem, but apparently this was not 

100% effective, based on your report. We are currently in the process of redesigning the portion of the 

paper path where we have seen the jams occur, an I will keep you posted o11 this. 

Scott 


From: sahluwalia@na.ko,com [SMTP:sahluwalia@na.ko.com] 

Sent: Thursday, May 04, 2000 6:44 AM 

To: seottshimmin@futurelogicinc.com 

Subject: Question 

Scott, 

What would be a circumstance where the printer would lose its memory, in terms 

of a database pre-loaded into it? The reason I ask is that before I left 

Cincinnati yesterday, we visited I0 venders/printers in the field. 

5 of the machines were working fine. Of the other five, one of the machines was 

not printing, three had coupon/paper jams, end the other on_ was Hot. We had 

tested each machine after installing, and what bugs me is that Matthew had to 

reload the promotions in two of these machines to get them to start printing 

again ...... any thoughts? 

Simmy 

CONFIDENTIAL 

00042 


-A0474- 

FL0021208

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#: 1366 

BRETY J. WILLIAMSON (S.B. #145235) 

bwilliamson@omln.com 

MICHAEL MYERS (S.B. #24O652) 


O'MEE'VENY & MYERS LLP 



Telephone: (949) 760-9600 

Facsimile: (949) 823-6994 




Corporation, 

V° 



Plaimiff, 


Corporation, 

Defendant. 

-A0475- 


DECLARATION OF ERIC 

MEYERHOFER 


Time: q :30 p.m. 


Judge: Hon. John F. Waiter 


MEYERHOFER 2:10-CV-07678-JFW-DTB

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2:10-cv-07678-JFW-DTB Document65-21 Filed 10/07/11 Page2 of 7 Page tD 

#: 1367 

I, Eric Meyerhofer, declare and state as follows: 

1. I am employed by FutureLogic, Inc. ("FutureLogic") in the position of 

Chief Executive Officer. The thcts set forth in this declaration are known to me 

personally. If called as a witness, I could and would testify competently concerning 

these matters. 

2. I was vice president of product development at FutureLogic during the 

t 997-2000 timeframe. As vice president of product development, I was responsible 

for the design and development of a prototype coupon printer intended for Tokheim 

Manufacturing Company ("Tokheim"), a manufacturer of fuel dispensing 

equipment. FutureLogic had previously developed commercialized gas pump 

printers for Tokheim. 

3. The prototype coupon printer tbr Tokheim had model number PMC- 

2010-A. The PMC-2010-A printer was designed to print receipts and coupons 

using data received from two different sources--namely, a gas pump controller and 

a network promotional controller. 

4. FutureLogic built this prototype in 1997-1998 and intended to present 

it to Tokheim. Because of changes in Tokheim's business condition, FutureLogic 

determined it would not be worthwhile to present the prototype to Tokheim and did 

not do so. 

5. The firmware for PMC-2010-A was completed and saved in 

FutureLogic's source code vault, Visual SourceSafe, on January 21, 1998. 

FUT00109014-FUT00109016 is a true and correct copy of a printout from Visual 

SourceSafe showing the dates that source code files related to the PMC-2010-A 

were completed. Visual SourceSafe is a source code control system that 

FutureLogic uses to control and track revisions to source code. 

6. As head of engineering in the 1997-2000 timeframe, I was also 

responsible for the design and development of a coupon printer for vending 

machines that FutureLogic created as part of a co-development project with the 

-A0476- 

- 2 - DECLARATION OF ERIC 

MEYERHOFER 2:10-CV-07678-JFW-DTB 

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2:10-cv-07678-JFW-DTB Document 65-21 Filed 10/07/11 Page3 of 7 Page ID 

#: 1368 

Coca-Cola Company ("Coca-Cola"). 

7. FutureLogic designed a prototype coupon printer for Coca-Cola that-- 

when it ultimately took shape--had separate communication ports for the printer to 

receive data from separate sources to print vouchers and coupons. 

8. I understand that Nanoptix attached a document titled "Kiosk. Thermal 

Printer Project LB970411-01 Functional Product Specification" as Exhibit 9 to a 

motion it filed with the Court. I am familiar with that product specification, which 

was prepared by Interleave Systems in 1997 based on input from FutureLogic. 

Exhibit 9 describes a printer in which one port is used for communication---either 

the MDB port or the RS232 port, but not both. At page 00121 of Exhibit 9, Section 

3.4 Switch Settings indicates that either the MDB port or the RS232 port may be 

selected for communication. No printer or prototype was ever developed or built 

pursuant to this specification. 

9. FutureLogic's and Coca-Cola's plans for the coupon printer constantly 

evolved in the 1997-2000 timeframe. At various times from 1997-2000, 

FutureLogic and Coca-Cola contemplated developing a printer that would receive 

coupon and voucher data from a modified vending controller through a single 

communication port. In addition, during that time frame, FutureLogic and Coca- 

Cola contemplated using a dispenser of pre-printed coupons instead of installing an 

actual coupon printer in the vending machine. 

10. In approximately March of 2000, FutureLogic delivered several PSA- 

66-VM prototypes ("the prototype printers") to Coca-Cola Enterprises ("CCE"). 

CCE is a bottling company for Coca-Cola, These prototype printers were placed 

into field trials to determine whether they would function under the conditions of 

actual use in the vending machine placed in the field. Field testing of the prototype 

printers was necessary to determine whether and how they would function in actual 

vending conditions--including, for example, conditions of varying power levels 

present in a vending machine and varying humidity and temperature in the 

-A0477- 


MEYERHOFER 2: 10-CV-07678-JFW-DTB

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#: 1369 

environment. Testing was also necessary to determine whether the prototype 

printers would function for their intended purpose of printing coupons using 

coupon data sent to the printers t¥om a promotional controller and printing vouchers 

based on data received from the machine controller. Testing was also necessary to 

determine whether the printer would jam ifa customer tried to put his finger over 

the bezel or insert an object into the bezel. Testing was required to determine 

whether the prototype printer was sturdy enough to withstand customer abuse, such 

as attempts to manipulate or interfere with the printer. Testing was further 

necessary to determine how and whether the printer would function in wet or rainy 

conditions to which an outdoor vending machine would be exposed. 

1 l. FutureLogic provided the prototype printers and technical information 

regarding those printers to Coca-Cola subject to an understanding that Coca-Cola 

would keep the printers and related technical information confidential. To my 

understanding, Coca-Cola abided by that confidentiality understanding and never 

disclosed any technical information concerning FutureLogic's prototype printers tO 

any third parties. 

12. FLO001781 is a true and correct copy of the first page of a draft 

specification that I prepared tbr the communication protocol used in the prototype 

printers. Consistent with my recollection regarding confidentiality, this document 

expressly states that it contains "PROPRIETARY and CONFIDENTIAL 

information of FutureLogic, Inc." This document was provided to Coca-Cola. 

13. Before the field triads, Simmy Ahluwalia, a Coca-Cola representative, 

proposed certain procedures for testing the FutureLogic prototype printers to 

determine whether they worked tbr their intended purpose. FL0003543 is a true 

and correct copy of an email I received on December 19, 1999, from Scott 

Shimmin, FutureLogic's project manager for the Coca-Cola coupon printer project. 

FL0003544 is a true and correct copy of the preliminary test plan aRached to 

Mr. Shimmin's email. FL0019004 is a true and correct copy of an email Mr. 

-A0478- 



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,2:10-cv-07678-JFW-DTB Document 65-21 Filed 10/07/11 Page 5 of 7 Page ID 

#: 1370 

Shimmin sent to Mr. Ahluwalia, and copied to me, providing comments regarding 

the test procedures for the FutureLogic prototype printers. 

14. Scott Shimmin reported to me at the time of the Coca-Cola project. I 

am personally familiar with his activities on behalf of FutureLogic regarding the 

Coca-Cola project. On behalf of FutureLogic, Mr. Shimmin visited CCE and 

helped to install the prototype printers into Coca-Cola vending machines. Mr. 

Shimmin also trained CCE personnel in how to load coupon data into the prototype 

printers and how to use the prototype printers for printing coupons. FL0021204 is a 

true and correct copy of an agenda for the field trials of the prototype printers. 

15. Once the field trial of the prototype PSA-66-VM units began, 

FutureLogic continued to receive reports from Coca-Cola and was involved in 

resolving issues encountered during the field trial. FL0002932 is a true and correct 

copy of a form FutureLogic provided to Coca-Cola for reporting any problems 

encountered during the field trials. 

16. During the course of the field trials, CCE periodically reported 

problems and test results to engineers at FutureLogic--including Mr. Shimmin, 

Mark Meyerhofer and me. 

17. As part of my involvement in the Coca-Cola project, I personally 

inspected vending machine units of the type in which prototype PSA-66-VM units 

were installed in the Cincinnati field trials. The printer unit was housed behind two 

separate doors. The printer could only be viewed or accessed by personnel working 

on the Coca-Cola printer project. 

18. FL0003905 is a copy of an email from Simmy Ahluwalia to Scott 

Shimmin. Scott Shimmin's name appears on the CC list. This email was retrieved 

from FutureLogic's server. 

19. FL0003906 is a true and correct copy of an email from Mike Ameiss 

of Coinco to me, dated June 27, 2000. Coinco was one of the companies that 

manufactured vending machines for Coca-Cola. 

-5- 

-A0479- 


MEYERJ-IOFER 2: 10-CV-07678-JFW-DTB

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20. FL0003914 is a true and correct copy of an email from Simmy 

Ahluwalia to Scott Shimmin, forwarding a field test status report. This email was 

retrieved from FutureLogic's server. 

21. FL0003915 is a true and correct copy of an attachment to the email 

sent by Simmy Ahluwalia to Scott Shimmin labeled FL0003914. This document 

was retrieved from FutureLogic's server. 


Ahluwalia to me, dated July 13, 2000. 


Ahluwalia to me, dated May 04, 2000. My name appears on the CC list. 

24. FL0003905, FL0003906, FL0003914, FL0003915, FL0003916 are 

examples of communications between FutureLogic and Coca-Cola discussing 

problems encountered during the field trial of the prototype printers and how to 

resolve those problems. 

25. FL0003579, FL0003590, and FL0021208 are examples of 

communications between FutureLogic and Simmy Ahluwalia discussing problems 

encountered during the field trials and potential solutions. FutureLogic--namely 

Mr. Shimmin and I---closely monitored the field trials of the prototype printers 

throughout the testing period. 

26. FUT00109005 is a true and correct copy of a printout from 

FutureLogic's Visual SourceSafe system showing the revision dates for the source 

code files for the Coca-Cola prototype printers. 



that this declaration is executed this 6th day of October, 2011, at Las Vegas, 

Nevada. 

-6- 

-A0480- 


MEYERHOFER 2:t0-CV-07678-JFW-DTB 

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-7- 

-A0481- 

DECLARATION OF ERiC 

MEYERHOFER 2:10-CV-07678-J FW-DTB

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10-cv-O7678-JFW-DTB Document 65-22 Filed 10/07/11 Page 1 of 5 Page ID 

#: 1373 - 


bwilliamson@onun.com 

MICHAEL MYERS (s.B. #240652) 





Telephone: (949) 760-9600 

Facsimile: (949) 823-6994 



FUTURELOGIC, INC., a Calitbmia 

Corporation, 

V, 



Plaintiff, 


Corporation, 

Defendant. 

-A0482- 


DECLARATION OF MARK 

MEYERHOFER 

Hearin_ Date: October 31, °,2011 

Time: t:30 p.m. 

Place: Couriroom 16 

Judge: Hon. John F. Waiter 


MEYERHOFER 2: I0-CV-07678-JFW-DTB

Case : :10-cv-07678-JFW-DTB Document 65-22 Filed 10/07/11 

#: 1374 

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I, Mark Meyerhofer, declare and state as follows: 


1. I am an employee of FutureLogic, Inc. ("FutureLogic"), currently 

holding the title of Co-Chief Technology Officer. The facts set forth in this 

declaration are known to me personally. If called as a witness, I could and would 

testify competently concerning these matters. 

2. I held the position of President of FutureLogic between 1990 and 

2001. While serving as the President, I oversaw FutureLogic's design and 

development of vending machine printers for the Coca-Cola Company ("Coca- 

Cola"). 

3. FutureLogic was introduced to Coca-Cola by David Uland of 

Interleave Systems. Mr. Uland acted as a local sales representative for FutureLogic 

in its dealings with Coca-Cola. On occasion, FutureLogic presented technical 

information to Interleave Systems and Interleave Systems, in turn, presented that 

information to Coca-Cola. [ understand and believe that interleave Systems was 

obligated to keep and did keep FutureLogic's technical information confidential 

throughout the course of the FutureLogic - Coca-Cola development project and 

after its completion. Similarly] ! understand and believe that Coca-Cola was 

obligated to keep and did keep FutureLogic's technical information confidential 

throughout the course of the FutureLogic - Coca-Cola development project and 

after its completion. 

4. Based on my experience working with Coca-Cola, Coca-Cola has a 

business practice to carefully control access to info_xnation related to its 

development of new products or services. Coca-Cola applied that practice 

throughout the course of the FutureLogic - Coca-Cola development project by 

maintaining as confidential all information related to the project. 

5. FUT00037346-FUT00037354 is a true and correct copy of a letter I 

received from Coca-Cola, which--to the best of my recollection--I revised but did 

not countersign. At the page labeled FUT00037353, this letter contains Coca- 

-A0483- 

- 2 - DECLARATION OF MARK 

MIEYERHOFER 2: 10-CV-07678-JFW-DTB 

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Cola's acknowledgement and proposal that FutureLogic's past and future 

disclosures of proprietary information were to be maintained as confidential. 

6. FL0023292- FL00232924 is a true and correct_copy of a letter I sent to 

Simmy Ahluwalia of Coca-Cola enclosing a quotation for prototype charges and 

engineering fees. FL0023293 includes ballpark pricing for the PSA-66-CC printer 

for several possible quantities. The pricing was provided at Coca-Cola's request to 

allow Coca-Cola to assess whether the printer development project was worth 

continued investment by both sides. 

7. Based on my experience working with Coca-Cola, Coca-Cola required 

as a matter of business practice a proposal or product quotation for any new 

material that Coca-Cola would acquire and any expenditure to be made--regardless 

of whether the purpose was experimental or commercial. In response to a proposal 

or quotation, Coca-Cola would issue a purchase order. Coca-Cola would then issue 

payment in response to an invoice. 

8. In approximately April of 2000, FutureLogic delivered 24 prototype 

units of PSA-66-VM printers to Coca-Cola Enterprises ("CCE"). FutureLogic 

provided the prototype printers to CCE so that Coca-Cola / CCE could conduct 

tests of the prototype printers under conditions of actual use. To determine whether 

the printers would work reliably to perform their intended purpose of printing 

coupons in the field, it was necessary to test them in actual vending machines in the 

environments in which vending machines are normally placed. 

9. When FutureLogic provided the prototype printers to CCE, 

FutureLogic requested, and CCE paid, prototype fees that covered a portion of 

FutureLogic's non-recurring engineering costs and costs for raw materials to 

manufacture the prototype printers. FutureLogic recouped only a portion of its 

development costs and did not derive a profit by charging CCE for its prototype 

fees and non-recurring engineering costs. 

10. FutureLogic was a small company in the 1997-2000 timeframe, having 

-A0484- 



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:10-cv-O7678-JFW-DTB Document 65-22 Filed 10/07/11 Page 4 of 5 Page ID 

#: 1376 

approximately I0 employees. FutureLogic could not afford to complete a 

development and testing project as large as the Coca-Cola printer project without 

receiving some income to defray the costs. 

! 1. FL0002930-31 is a true and correct copy of an email exchange dated 

May 9, 2000, between Scott Shimmin, who was a FutureLogic employee at the 

time, and Sirnmy Ahluwalia, who was an employee of Coca-Cola at the time. [ was 

a recipient of the emails. One of the messages in the thread contains Mr. 

Ahluwalia's report to Scot Shimmin and me concerning the field trials of the 

FutureLogic prototype printers. Scott Shimmin's reply attaches a copy of a form 

created by FutureLogic on which Coca-Cola was requested to report any problems 

encountered with the prototype printers during field testing. FL0002932 is a true 

and correct copy of the problem report form. 

12. FL0003579 is a true and correct copy of an email exchange dated 

April 30, 2000, and May l, 2000, between Scott Shimmin, Eric Meyerhofer, and 

me for FutureLogic and Simmy Ahluwalia for Coca-Cola. 

13. FL0003590 is a true and correct copy of an email Scott Shimmin 

forwarded to me on May 11, 2000. In the email forwarded by Mr. Shimmin, 

Mr. Ahluwalia reported the results of his visits to field sites where the prototype 

printers were being tested. 

14. FutureLogic received periodic test reports from Coca-Cola throughout 

the field trials of the prototype printers. FutureLogic received reports of various 

problems with the printers and provided solutions as needed. 

t5. 

the printer. 

At the end of the trial period, Coca-Cola decided not to commercialize 


of America and the State of California that the foregoing is title and correct, and 

that this declaration is executed this 6th day of October, 2011, at Las Vegas, 

Nevada. 

-A0485- 



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:10-cv-07678-JFW-DTB Document 65-22 

#: 1377 

OMM_US:70084091.2 

-5- 

-A0486- 


Mark bc_erhote_ ' 



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#: 1378 


bwilliam son(/_omm.com 

MICHAEl2 MYERS (S.B. #240652) 

mmvers,47_,omm.com 

O'.MEIL'VENY & MYERS LLP 

610 Newoort Center Drive 17th Floor 

Newpo_each, CA 926N3-6429 

Telephone: (949) 760-9600 

Facsunile: (949) 823-6994 




Corporation,, 

V. 

Plaintiff, 


Corporation°, 



Defendant. 

-A0487- 


DECLARATION OF DAVE ULAND 

Hearing Date: October 31,2011 I 

Time: -1:30 p.m. 


Jndge: Hon. John IF. Walter 


2:10-CV-07678-JFW-DTB

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,_2:10-cv-07678-JFW-DTB Document 65-23 Filed 10/07/11 Page 2 of 8 Page ID 

#: 1379 

I, Dave Uland, declare and state as follows: 

1. I am presently employed by ASK-intTag, LLC. In the 1998-2000 

timefi'ame, I was President of Interleave Systems, which was owned in majority by 

Wisconsin Label Corporation. While serving as President of Interleave Systems, I 

was also an employee of Wisconsin Label Corporation. Wisconsin Label 

Corporation merged with Superior Label Systems, lnc. in 2000 and formed WS 

Packaging Group. I left WS Packaging in July 2010 to work for ASK-intTag, LLC. 

WS Packaging is a 49% shareholder in ASK-intTag, LLC. 

2. Interleave Systems was formed in early 1996 as a division of 

Wisconsin Label Company primarily selling and supporting automated label 

application equipment for various customers, including a customer that employed 

the use of soda pop vending machines (The Customer). Sometime in the late 

1990s, The Customer contacted Wisconsin Label Sales regarding their interest in a 

coupon printer for vending machines. Wisconsin Label Sales in turn contacted me, 

at Interleave, to assist the customer. The Customer did not have a precise idea of 

the type of printer it required. I introduced The Customer to Mark Meyerhofer at 

FutureLogic and proposed that The Customer should request FutureLogic 1_o 

prepare a specification for a printer for use in The Customer's vending machines. 

3. As a result, Mark Meyerhofer and his team at FutureLogic prepared a 

specification for a coupon printer, proposed prototype printers to be tested in The 

Customer's vending machines and began development of such a printer. During 

FutureLogic's development of a printer to be tested in The Customer's vending 

machines, I acted as local technical support representative for FutureLogic. 

4. During the course of FutureLogic's development of a printer for The 

Customer, I considered the technical information provided by FutureLogic to be 

confidential and I treated it as such. Attached hereto as Exhibit A is a copy of an 

email I sent to Eric Meyerhofer on August 3, 2000, in which I stated, "Of course all 

drawings and confidential information will be kept between us as it has been 

-A0488- 

- 2 - DECLAIIATJON OF DAVE ULAND 

2:10-CV-07678-JFW-DTB 

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#: 1380 

always." This statement is consistent with my recollection that I treated 

FutureLogic's technical intbrmation regarding its printers as confidential during the 

course the FutureLogic development project with The Customer. 

5. To the best of my recollection, them was a general written non- 

disclosure agreement between Interleave Systems and The Customer that would 

have covered confidential information provided by Interleave to The Customer. I 

have been unable, so far, to find this documentation. Interleave made a conscious 

decision to allow FutureLogic to deal directly with The Customer on this project. 

6. The coupon printers provided by FutumLogie to The Customer in the 

1998-2000 timeframe were, to my knowledge never commercialized beyond the 

prototype phase. A small number of prototypes were installed in vending machines 

in Cincinnati, Ohio for field trials of the printers and the coupon redemption 

systems. I visited field trial sites and helped The Customer's technicians use 

prototype software to create specific coupon images on the prototype printers. I also 

recall effecting basic mechanical repairs or adjustments to printers as needed. At 

the field trial sites, the printers were tested in vending machines under conditions of 

actual use. 

7. To my knowledge, the project was not funded for commercialization. 

The measurable results of the effectiveness of the method of couponing were not 

strong enough to justify further investment in the development of the printer or 

related support systems. Instead development funds were directed to other projects. 

8. During field trials of FutureLogic's printers, I participated in periodic 

telephone conversations with The Customer's personnel regarding the progress and 

status of the field trials. I relayed information about these field trials to 

FutumLogic. I also recall providing feedback to Future Logic about specific 

technical problems with the paper tray and with the coupon image creation software 

ease of use, 

-3- 

-A0489- 


2:10-CV-07678-JFW-DTB

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2:10-cv-07678-JFW-DTB Document 65-23 Filed 10/07111 Page 4 of 8 Page ID 

#: 1381 

I declare under penalty ofpeljm3_ under the laws of the United States 


that this declaration is executed this 6th day of October, 2011 at Colchester, 

Vermont. 

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#: 1382 

Declaration of David Uland 

Exhibit A 

-A0491 - 

Page ID

From: 

Sent: 

To: 

Subject: 

Eric, 


#: 1383 

Dave Uland [dave.uland@translucenttech.com] 

Thursday, August 03, 2000 12:00 PM 

eric.meyerhofer@futurelogicinc.com 

RE: Coke Vending 

Thanks for your responses. I know that you are pretty busy at this time. 

We agree about the areas for improvement. I also agree with your stance about waiting for 

commercialization of the printer before you invest more in the project. 

One message I am sending is that WLG does not want to wait for commercialization to 

correct the paper tray issues which is as much related to the paper packing design as it 

is the printer tray design. It is necessary for these two to mesh conceptually to make it 

easy for the route drivers to use. If the route drivers resist this, it will not go to 

commercialization. We sell on the order of 4 million dollars annually to Coke now, so we 

see this kind of investment as part of our ongoing marketing effort to them. We see Coke 

becoming our second largest account over the next three years, exclusive of this project. 

The other message is that I can help with the software side, if you want me to help. Or I 

can get the hell out of the way if you want me out of the way. 

Scott indicated that he was 95% committed with the casino project and 5% committed to 

Coke. This I understand, but I believe Matt and Simmy need a little more attention at this 

particular time. I can give them that attention without burden or harm to Future Logic. 

Your response in this area sounds as if you want me to back off here, but you did not 

actually say that. Am I reading correctly between the lines? 

Of course all drawings and confidential information will be kept between us as it has been 

always. I am asking for the print because I want to be able to generate and communicate 

changes to you accurately. I have resources to create prototypes of trays quickly both 

here and in Algoma which can reduce your load as well. 

I am not sure what you want as a sales and marketing partner in gaming. If you are looking 

for channels, exactly what end user do you want to reach and what ancillary services do 

you want the channel to provide? 

Dave 


From: Eric Meyerhofer [mailto:eric.meyerhofer@futurelogicinc.com] 

Sent: Wednesday, August 02, 2000 9:06 PM 

To: 'Dave Uland' 

Subject: RE: Coke Vending 

David, 

We want to take tile project to the next level, and that means enhancements to any weak 

areas on the printer, which right now I have identified as: 

i. paper tray improvement 

2. teeth system improvement 

3. image quality improvement 

4. coupon creation capability 

We will pursue all of these issues as soon as there is some commitment or indication on 

the customers side that the project moves to commercialization. That being said, we of 

course would value your assistance. I will send you a drawing of the paper tray in 

electronic format to look at. We would expect you to keep the drawing confidential and 

can discuss changes you would recommend in a conference call with an engineer here (we 

CONFIDENTIAL 

-A0492- 

FL0002578

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#: 1384 

already have some ideas). 

Filed 10/07111 Page7of8 PagetD 

In regards to the firmware, the plan outlined in our call with Matt and Simmy was for Matt 

to provide notes on how he would like the database to appear. Following that, we can do 

some brain storming on how the system should be architected in order to be easy to use and 

support current and anticipated needs. We would value your input on the same topic, most 

likely in a conference call environment (F/L and yourself). 

Thanks for the heads up. As far as George S. goes, it is not uncommon for every one to 

attack the leader; its all they can do. We have managed to go from 0 printers per month 

to 10K printers per month in just I0 weeks (quite a feat in today's components market). 

In another 6 weeks or so, there should be an inventory of printers and it will all just be 

cocktail party talk. 

At this time we are OK on capacity, but may want to discuss additional sales/marketing and 

distribution partners on this printer for gaming (please keep this very quiet). 


From: Dave Uland [SMTP:dave.uland@translucenttech.com] 

Sent: Wednesday, August 02, 2000 6:36 AM 

To: Mark Meyerhofer; Eric Meyerhofer 

Subject: Coke Vending 

How about some free help. I spoke with Scott Shimmons at length yesterday about the 

vending account. While he is aware of the issues outstanding at Coke, he and Future Logic 

are not really in a position to address the printer issues directly. You have a tiger by 

the tail in IGT and the Coke project is still not committed. I know where I would be 

putting my chips, which is exactly what you have done. 

To that end, I would like to help more with Coke. If I can get a drawing of the tray, I 

can move far faster than you to address Matt Hahn's issues, without the budgetary and 

resource restrictions. We have to be involved in any design changes to the tray anyway as 

we try to address the packing and loading issues. I will feed back any changes to you and 

I will caution Coke that any change could mildly impact the cost of the unit, so you are 

not left holding the bag.. I promise and will back that up formally if you require. 

I would also like to remind you that you were going to forward to me whatever you had on 

the software side, so I could size the task. I see this as a significant stumbling block 

unless we address it now. I have the resources to carry that ball. Simi is in Cincinnati 

next week with Matt which could be a good time to discuss. In fact if you had a drawing of 

the new teeth, I could probably have the burst testing completed by tomorrow AM. 

Time to get off the button with Coke. Please respond soonest. 

Dave 

PS 

I told Scott to plan on seeing 10K printers a month in the near term. All of the IGT 

people on the ground expect a full implementation sooner than was projected. 

Also George Sandvig (Kanzaki) is not your friend. I have been told by Tom he has been 

saying all sorts of nasty things about FL and your ability to deliver printers. Other 

printer sources tell me Transact is very up beat about their potential market share at IGT 

and that IGT is still talking to JCM. If you run into capacity problems, we should talk. 

There are a lot of resources available in printerland these days and I know several ..... 

Apparently Tom committed some kind of gaffe about cleaning printers. He thinks he may have 

miffed Seiko, and is puzzled about what happened. I told him that the printer may not need 

a lot of cleaning, and that Seiko may have felt Tom was questioning the printer 

reliability when he brought it up, which was not the case. Can you give me the straight 

scoop on what the problem was. I want to make it right. 

CONFIDENTIAL 

-A0493- 

FL0002579

CONFIDENTIAL 


#: 1385 

-A0494- 

FL0002580

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BRETT J. WILLIAMSON (sB. #145235) 

bwillimnson(_omm.com 

MICHAEI_ MYERS (S.B. #24O652) 

mmvers,@,omm.com 

O'MEI_VENY & MYERS LLP 


Newport_each, CA 92660-6429 

Telephone: (949) 760-9600 

Facsimile: (949) 82._-6994 




Corporation,, 

V, 

Plaintiff, 

NAN OPTIX, INC., a Canadian 

Corporation,, 



Defendant. 

-A0495- 


DECLARATION OF SIMMY 

AHLUWALIA 

Hearing Date: October 31, 2011 

Time: ] :30 p.m. 



DECLARATION OF SIMMY AHLUWALIA 

2:10-CV-07678-JFW-DTB

2011-tQ-06 14;36 ^t|a_ta Socia|LLC 6783209423>> Channel-(] 


#: 1387 

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I, Simmy Ahulwalia, declare and state as follows: 


I reside in Dunwoody, Georgia. As stated in my declaration dated 

September 26, 2011, I was previously employed by The Coca-Cola Company as a 

Commercialization Engineer from 1998 to 2001. I was specifically involved in The 

Coca-Cola Company's project with FutureLogic, Inc. to develop printers for 

printing coupons in vending machines. 

2. As part of that project, prototoype printers provided by FutureLogic, 

Inc. were tested in vending machines at several locations in Cincinnati, Ohio. 

3. To my understanding, information exchanged among FutureLogic, Inc. 

and The Coca-Cola Company during the printer development project was treated as 

confidential by all parties involved in this field test. To the best of my recollection, 

I maintained FutureLogic's technical intbrmation as confidential as did others at 

The Coca-Cola Company. 

4. To the best of my recollection, the printer prototypes provided by 

FutureLogic, Inc. to The Coca-Cola Company were used for experimental purposes 

to determine both vending machine and printer technology synergistic performance 

as well as sales performance. To my knowledge, the Coca-Cola Company never 

commercialized the vending machine printer designed by FutureLogic. 


of America and the State of California that the foregoing is true and correct to the 

best of my knowledge. This declaration is executed this 6th day of October, 2011. 

-A0496- 

c-_ "_

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MICHAEL MYERS (S.B. #24O652) 




Newport_each, CA 9266_)-6429 

Telephone: (949) 760-9600 

Facsnnile: (949) 823-6994 




Corporation, 

V. 



Plaintiff, 


Corporation, 

Defendant. 

E. Meyerhofer Deposition at 24:13-25: 



EXCERPTS OF DEPOSITION OF 

ERIC MEYERHOFER IN SUPPORT 

OF FUTURELOGIC'S OPPOSITION 

TO NANOPTIX'S MOTION FOR 


INVALIDITY OF THE '855 PATENT 

Judge: 

Hearing Date: 

Hearing Time: 

Pre-trial 

Conference: 

Trial Date: 

DEPOSITION EXCERPTS 

Hon. John F. Walter 

Nov. 7,201 l 

1:30 pm 

Dec. 16, 2011 

Jan. 10, 2012 

Q. Did you guys call tiffs project the Tokheim project at that time? 

A. Yes, for the most part. We were doing business with Tokheim on a 

number of different printers and projects unrelated to the couponing piece just for 

gas pump voucher printers. And we thought that that would be a -- you know, from 

-A0497- 

EXCERPTS OF DEP. OF E. MEYERHOFER ISO 

MOTION FOR SUMMARY JUDGMENT 2:10-CV- 

07678-JFW-DTB

Case 2 10-cv-07678-JFW-DTB 

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Document66 Filed 10/07/11 Page2of3 Page ID#:1389 

a business perspective something that might - they might see value in. So we 

thought, well, rather than just go in and just discuss it in general terms, we might 

make an prototype, which we did internally, but we never got to the point of talking 

to them about it. 

E. Meyerhofer Deposition at 25:11-26:12: 

Q. Did you demonstrate the Tokheim unit to anybody? 

A. Not to my recollection, we didn't. 

Q. What about people within FutureLogic? Who saw the -- did anybody 

see the unit in operation? 

A. I believe perhaps the same individual I mentioned, Wan Hsing Ma, 

might have, who was working there at that time. I can't -- I don't believe he worked 

on the project, but he may have. I can't recall. I remember doing a lot of the work 

myself on it, but he may have seen it. 

Q. Did Mark see it? 

A. Definitely Mark as well. 

Q. Anybody else? 

A. [ just don't recall --it was pretty much an engineering project. I don't 

recall really doing much with it beyond the lab. 

Q. Did you approach anybody ontside of FutureLogic, Tokheim included, 

about this design of the Toldleim unit? 

A. To my recollection we were getting it prepared to do that. And 

Tokheim's whole business took an adverse change about that time, so new projects 

were not going to be of interest, and that's when we decided not to pursue it. That 

was -- that's my recollection of it, so I think the answer is no to that. 

E. Meyerhofer Deposition at 37:1-17: 

Q. -- First Set of Interrogatories. Let me direct your attention to page 3. 

You see the sentence where it says, "The invention of the '855 Patent was 

conceived by September 3, 1997, and was reduced to practice by January 21, 

-A0498- 

EXCERPTS OF DEP. OF E. MEYERIIOFER ISO 

- 2 - MOTION FOR SUMMARY JUDGMENT 2:10-CV- 

07678-JFW-DTB 

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1998"? 

A. Yes. 

Q. Did you have to review any documents to determine that the invention 

was reduced to practice by January 21, 1998? 

A. I think it would have been related to the Coke -- or the Tokheim unit as 

far as the source code, and I can't recall if there was a -- I'm fuzzy on whether there 

was a schematic or i saw a schematic, but I would have seen -, probably was -- 

probably got the date for the source code on Tokheim as a ftmction of what was in 

our computer time, date stamps. 

E. Meyerhofer Deposition at 38:16:39:5: 

Coke models? 

Q. Right. Are the different -- are there differences between the different 

A. To my recollection I -- I think so because it was -- the project was 

evolving and so was the code as well. So I don't know where -- I'm sure to make 

this statement that an inspection was done of this particular unit; that this would 

have been what we think of as -- there is one physical prototype I've seen that I 

know existed, so I'm guessing that's the number on the unit. I haven't inspected that 

prototype in some time, so I don't know what's stamped on there, but ! would 

believe that the --that's probably what's on the tag on that particular prototype. It's a 

physical unit. 


MICHAEL MYERS 


-3- 

-A0499- 

By: /s/ Brett J. Williamson 




EXCERPTS OF DEP. OF E, MEYERIIOFER ISO 

MOTION FOR SUMMARY JUDGIVlENT 2:10-CV- 

07678-JFW-DTB

Joint Appendix One

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