Joint Appendix One

Case 2:10-cv-07678-J FW -DTB
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Document 65 Filed 10/07/11 Page 22 of 26 Page ID
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791 F.2d at 150, flae court found stRfficient evidence to demonstrate an isstie of
material fact concerning whether a third party's testing of the patented invention
was experimental where there was evidence the patentee made "provisions ... for
reporting back to [the patentee] the results of the testing and that modifications
made to the alloy by [the patentee] were based on these reports." Id. Here,
FutureLogic created a detailed form for Coca-Cola to report the results of the
testing and Coca-Cola regularly reported such test results. (Facts, 99.)
The fact that FutureLogic's potential customer, Coca-Cola, participated in
testing the prototype printers does not support Nanoptix's arguments flaat the
testing, sale, and offers to sell were commercial rather than experimental. In
Continental Can Company USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir.
1991), which involved joint testing between a patentee and its customer, the Federal
Circuit reversed a district court's grant of summary judgqnent of invalidity based on
an on sale bar. Id. at 1269. h_ that case, the district court granted summary
judgment of invalidity under § 102(b) based on an agreement between Admiral
PlasticsIthe inventor's employer--and Coca-Cola to develop a suitable plastic
bottle, ld. "The agreements provided that Admiral Plastics would make and Coca-
Cola would test the bottles, and that if a satisfactory bottle was developed it would
be manufactured by Admiral and purchased by Coca-Cola." Id. Although
minimum and maxhnum prices were stated in an agreement and costs were
discussed, the Court found that § 102(b) did not apply. Id. ("[Y]he on sale bar of
§ 102(b) does not arise simply because the intended customer was participating in
development and testing."). As file court observed, although Admiral Plastics'
hope was surely commercial sales, this hope was insufficient to convert an
experimental use to a commercial one. The court further noted that "[t]he
[patented] bottle was part of a terminated development project that never bore
commercial fruit and was cloaked in confidentiality." Id.
Similarly, the fact that FutureLogic's potential customer, Coca-Cola,
-A0382-
OPPOSITION TO ])EFENI)AN'F'S MOTION FOR
1 8 SUMMARY JUDGMEI'-,FF
CV 10-07678-JFW (DTBX)
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