Joint Appendix One

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2:10-cv-07678-JFW-DTB Document 55 Filed 09/28/11 Page 11 of 14 Page ID
#: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
Nanoptix' MSJ -8-
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