Joint Appendix One

Cas_ 2:10-cv-07678-J FW -DTB
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Document 65 Filed 10/07/11 Page 14 of 26 Page ID
#: 1265
of developing the "promotional couponing system." (Facts, 120.) Mr.
Meyedlofer further informed the USPTO that a number of prototype printers that
embodied the '855 patent were constructed by FutureLogic for experimental use
during tile period of the project. (Facts, 121 .) Mr. Meyerhofer filrther infonned
the USPTO that the prototype printers were operated for a period of time by
FutureLogic and the soft drink manufacturer and that the prototype printers were
accessible only to personnel of FutureLogic and the soft drink manufacturer.
(Facts, 122.) In addition, Mr. Meyerhofer informed the USPTO that FutureLogic
and Coca-Cola exchanged infonnation subject to a mutual confidentiality
agreement. (,Facts, 123.) Finally, Mr. Meyerhofer informed the USPTO that a
decision was made not to commercialize the prototype printers and the printers
were therefore not sold or offered for sale. (Facts,, 124.) With full awareness of
these facts, the USPTO detennined that the claimed subject matter of the '855
patent was patentable. (Facts, 125.)
lII. ARGUMENT
Nanoptix identifies several events that it contends invalidate the '855 Patent
trader Section 102(b). First, Nanoptix asserts that the claimed invention of the '855
Patent was offered for sale to Coca-Cola on April 25, 1999. Second, Nanoptix
asserts that the claimed invention was offered for sale to Coca-Cola on October 18,
1999. Third, Nanoptix asserts that 24 prototype units embodying the claimed
invention were sold to Coca-Cola in approximately April 2000 and thereafter
placed into public use. Because these alleged acts were conducted primarily for
experimental rather than commercial purposes, they do not constitute invalidating
events under Section 102(b).
In addition, the alleged offers for sale are not invalidating events under
Section 102(b) because there is no evidence that any printers offered for sale on
those dates would have met the requirements of the '855 Patent claims. Indeed, no
printers having the model numbers identified in the April 25 and October 18, 1999,
-A0374-
OPPOSITION "['O 1)EFI?,NDANT_S MOTION FOR
1 0 SUMMARY JUDGMENrr
CV 10-07678-JFW (DTBX)
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