Joint Appendix One

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2:10-cv-O7678-JFW-DTB Document 65 Filed 10/07/11 Page 23 of 26 Page ID
#: 1274
conducted some of the actual testing of FutureLogic's prototype printers and the
fact that FutureLogic hoped to ultimately commercialize its invention do not
convert a primarily experimental use into a commercial one. Like the transaction in
Continental Can, the printer development project was terminated before it was ever
commercialized and information concendng FutureLogic's invention was
maintained as confidential by all involved parties. (Facts, 1 l 5.)
Nanoptix cites A tlanta Attachment Co., 515 F.3d at 1366, in support of its
on-sale bar and public use arguments. (Dkt. No. 55 at 9.) In Atlanta Attachment,
the court found that the customer's use of the invention was not experimental in
part because there was no evidence that the inventor established a system for testing
the invention and reporting to the patentee, as was done by FutureLogic in this case.
ld. at 1363. In addition, unlike in this case, the refinements or modifications made
by the patentee did not affect claimed features or to problems that prevented the
workability of the invention, ld. at 1367. Here, FutureLogic and Coca-Cola
worked together to resolve several issues that related to the printers' workability,
durability, and claimed features such as the ability to communicate with the
vending machine and the ability to print coupons. (See, e.g., FL0021208
(FutureLogic redesigning paper path to prevent paper jam problem that occurred
during field trials); FL0002930 (discussing planned fixes to resolve failure to load
coupon data); FL00039 l 0 (discussing development of database for coupon data);
FL0003906 (discussing problems in communication between vending controller
and printer).
3. Coca-Cola's Payment To FutureLogic For Protoyoes Does
Not Demonstrate Commercial Sales, Offers To Sell, Or
Public Use
Contrary to Nanoptix's assertions, the fact that a patentee receives payment
for samples to be tested does not demonstrate that an invalidating sale was made.
Armco, lnc., 791 F.2d at 151. As noted above, in order for FutureLogic and Coca-
Cola to determine whether the prototype printers could be reliably used for their
-A0383-
OI_POSITION TO I)EH_NI)ANT'S MOTION FOR
19 SUMMARY JUDGMENT
CV 10-07678-JFW (DTBX)