Joint Appendix One

Cas, ._2:10-cv-07678-J FW -DTB
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Document 65 Filed10/07/11 Page6of26 PagelD
#: 1257
before the critical date, Nanoptix points to FutureLogic's statement in all
interrogatory response that the '855 Patent claims were reduced to practice by the
construction of a printer on or before January 28, 1998, (Dkt. No. 55 at 4.) But this
January 28, 1998 date of reduction to practice relates to a prototype gas pump
printer FutureLogic created for a company called Tokheim, not the vending
machine printer later built and provided to Coca-Cola. (FutureLogic's Statement
Of Genuine Issues Of Material Fact ("Facts"), 49-55.) The gas pump printer was
tested only in FutureLogic's private facilities and was never sold or even
demonstrated for Tokheim. (ld. 52.) The printer that FutureLogic ultimately
provided to Coca-Cola, prototype model nmnber PSA-66-VM, was not
mmmfactured until March of 2000. The two printers that were the subject of
alleged offers for sale to Coca-Cola in 1999--"KBCOK-66" and °'Custom
CCUSA"_were never even built. (Facts, 76, 81 .)
There is at least a genuine issue of material fact that requires denial of
Nanoptix's motion for summary judganent because the evidence shows that the
alleged sale, offers to sell, and field trials of FumreLogic's PSA-66-VM printers
were experimental rather than commercial, which negates invalidity under
Section 102(b). The evidence further shows that the alleged offers for sale in 1999
related to hypothetical printers that were never built and therefore cannot be said to
have embodied the '855 Patent. Nanoptix's motion for summary judgment of
invalidity should be denied.
II. STATEMENT OF FACTS
A. By January 21_ 1998_ FutureLo_ic Had Built A Prototype Printer
Intended For "l okheim That Embodied The '855 Patent
On January 2 l, 1998, FutureLogic completed the firmware for a prototype
gas pump printer wifll model number PMC-2010A. (Facts, 49.) The PMC-2010-
A printer was designed to print vouchers and coupons using data received from two
different sources--namely, a gas pump controller and a network promotional
-A0366-
OPPOSITION TO ])EFII_NDANT_S MOI'ION FOR
2 SUMMARY JUDGMENT
CV 10-07678-JFW (DTBX)
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