Joint Appendix One

Case 2:10-cv-07678-J FW -DTB
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Document 65
#: 1269
Filed 10/07/11 Page 18 of 26 Page ID
determine whether the prototype primers would reliably perform their intended
functions in a vending machine placed in the field--including, for example,
receiving coupon data for printing coupons, printing coupons, and receiving data
fiom the vending controller under conditions of varying power supply, varying
humidity, customer abuse, and operator error. (Facts, 129-130.) It is well
settled that where testing is required to determine that an invention will work in its
intended environment, such testing (and prototype sales incident to such testing) do
not place an invention "on sale" or in "public use" within file meaning of Section
102(b). See Kolmes v. World Fibers" Corp,, 107 F.3d 1534 (Fed. Cir. 1997) (pre-
critical date testing of meat packing gloves in a meat packing plant was not public
use or on sale bar because "[a]n inherent feature of Kolmes' invention was
durability, the ability to withstand use in an environment such as a meat-packing
plant"); Morion, 239 F.3d at 1259 (finding a genuine issue of fact whether tbe sale
of a trailer constituted a commercial sale because, as the patentee's chief engineer
testified, "'it [would have been] necessary to test it in its real working enviromnent
to make sure that it would work.").
Nanoptix has not offered any evidence--let alone clear and convincing
evidence--to support a finding that the alleged sale, offers to sell, and use of the
prototype printers were primarily commercial rather than experimental. Nanoptix
incorrectly asserts that these activities were not experimental because "[n]either
Coca-Cola nor its customers had any obligation of secrecy," and (2) "FutureLogic
had no control or involvement in the prototype field testing in which the printers
were freely available for us[e] [sic]." (Dkt. No. 55 at 9.) In addition, Nanoptix
asserts the fact that FutureLogic received payment for the prototypes establishes
that the sales were commercial in nature. (Dkt. No. 55 at 7.) As explained in detail
below, each of Nanoptix's arguments is factually and legally incorrect.
-A0378-
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Ol 3POSH'ION
TO I)I);FI_.NI)ANT'S MOTION FOR
SUMMARY JUDGMENT
CV 10-07678-JFW (DTBX)
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