Joint Appendix One

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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
Nanoptix' MSJ -2-
-A0102-