Joint Appendix One

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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,
- 9 - Case No. CV 10-7678-JFW-DTB
Nanoptix, lnc.'s Statement 0f Unco.qtrovened Facts and Conclusions of Law
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