Joint Appendix One

Case 2:10-cv-07678-J FW -DTB
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Document 65 Filed 10/07/11 Page 24 of 26 Page ID
#:1275
intended purpose under conditions of actual use, it was necessary to conduct field
trials of those printers. (Facts, 129-134.) FutureLogic was a small company that
could not reasonably afford to take on a large development and testing project
without any income during the course of that project. (Facts, 89.) Accordingly,
Coca-Cola and FutureLogdc agTeed to share the costs of developing prototypes and
testing those prototypes. (Facts, 88.) FutureLogic did not earn any profit from
the small number of prototypes provided to Coca-Cola. (Facts, 88.)
The fact that a patent owner did not profit from the allegedly invalidating
sale is a factor in detennining whether the sale was for commercial or experimental
purposes. In Monon, the Federal Circuit reversed a district court decision granting
summary judgment that the sale of a trailer created an on sale bar. 239 F.3d at
1260. Although the patent owner received payment for the trailer, the court was
persuaded by evidence that file patent owner's customer "was charged only for the
cost of building the trailer and ... did not profit from the sale of the test trailer." ld.
at 1260.
As noted, FutureLogic was a small company in 1997-2000 that cotdd not
afford to proceed with a large development project without receiving any income.
Under similar circumstances, the Federal Circuit has found that payments made to
acquire sample products were incidental to the experimental purpose and did not
render the transaction a commercial offer for sale. See Armco, 791 F.2d at 151
(finding that sales of alloys were not invalidating under Section 102(b), in part
because payments for samples were customary in the industry and because Annco
could not afford to filrnish free samples).
The fact that FutureLogic and Coca-Cola exchanged quotations, purchase
orders, and invoices in connection with FutureLogic's delivery of prototype printers
to Coca-Cola does not signify that the transaction was for commercial purposes.
Where the evidence suggests that "sales authorization and purchase orders were
issued as a regular business practice even during the course of experimentation,"
-A0384-
OPPOSITION TO 1)EFIIr.NDAN'r's MOTION FOR
20 SUMMARY JUDGMENT
CV 10-07678-JFW (DTBX)
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