Joint Appendix One

Case 2
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10-cv-07678-JFW-DTB Document 64-2 Filed 10/07/11 Page 12 of 15 Page ID
#:1235
October 18, 1999 offers for sale, the sale of 24 prototype units to Coca-Cola or the
public use activity in Cincinnati, Ohio.
54. During the prosecution of the '855 patent, FutureLogic, the inventor
and its patent attorney knowingly made false statements to the PTO concerning the
existence of a mutual non-disclosure agreement, the sharing of costs, the operation
of the prototype units sold to Coca-Cola and the experimental use of such
prototypes by Coca-Cola. Pursuant to Fed. R. Civ. P. 8(d)(2), in the alternative, if
the "claimed invention" described in Mr. Meyerhofer's declarations and in remarks
to the PTO by its patent attorney, is represented or determined to not include all
claims of the '855 patent, FutureLogic, the inventor and its patent attorney made
knowingly false statements that all claims of the '855 patent were reduced to
practice.
55. But for the non-disclosures and knowingly false statements, the '855
patent would not have issued.
FIRST COUNTERCLAIM
(Declaratory Judgment of Noninfringement)
56. An actual case or controversy exists between Nanoptix and Plaintiff"
concerning infi'ingement of U.S. Patent No. 7,594,855 (the '"855 patent").
57. Nanoptix restates and incorporates the allegations contained in
paragraphs 24-28 of this counterclaim.
58. Nanoptix is not infringing, and has not infringed, either by direct
infringement, contributory infringement, or inducted infringement, any claims of
the '855 patent.
-A0344-
- 1 ] - Case No. CV 10-7678-JFW-DTB
Nanoptix, Inc.'s First Amended Answer and Counlerclaims
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