Joint Appendix One

I
I
I
I
I
I
I
I
I
I
I
I
I
I
I
I
I
I
I
Cas_
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
2O
21
22
23
24
25
26
27
28
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.
Defendant's -3-
Proposed MSJ
Decision
-A0114-