Joint Appendix One

Case2:10-cv-07678-JFW-DTB Document 121 Filed 11/02/11 Page6of7 Page ID
#: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
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