Joint Appendix One

Cas_, 2:10-cv-O7678-J FW -DTB
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Document 65-2 Filed 10/07/11 Page 2 of 6 Page ID
#:1315
This Court, having reviewed the motion for summary judgment of invalidity
_-filed by Nanoptix, Inc. ("Nanoptix"), tile opposition fllereto filed by FutureLogic,
Inc. ("FutureLogic') and considered all admissible evidence and argument in
support, opposition, rind reply, issues the following decision.
Nanoptix's motion asserts that certain activities of FutureLogic that occurred
during fl_e course of a joint development project between FutureLogic and the
Coca-Cola Company ("Coca-Cola") constituted invalidating offers for sale, sale,
and public use under 35 U.S.C. § 102(b). For the following reasons, the Court
denies Nanoptix's motion for sulnmary judgment.
In P./affv. Wells Electronics, Inc., 525 U.S. 55 (1998), the Supreme Court
aunounced two conditions that must be satisfied before the "on-sale bar" of 35
U.S.C. § 102(b) applies to invalidate a patent. First, "the product must be the
subject of a commercial offer for sale." t_aJ]_ 525 U.S. at 67 (emphasis added).
This analysis requires determining whether "the sale was commercial rather than
experimental in nature." id. Second, the invention must "'ready for patenting." ld.
An invention is ready for patenting if it has been reduced to practice or if the
inventor has prepared sufficiently specific drawings or descriptions of the invention
to enable a person skilled in the art to practice it. ld. at 67-68.
Regarding the first prong of the Pfafftest, evidence that a sale, offer to sell,
or use was primarily experimental, rather than commercial, negates invalidity under
35 U.S.C. § 102(b) for such activities. An accused infringer bears the burden to
prove invalidity by clear and convincing evidence. Lisle Corp. v. A.J. Mfg. Co.,
398 F.3d 1306, 1316 (Fed. Cir. 2005). To prove invalidity based on a sale or offer
to sell, "the accused infringer must prove by clear and convincing evidence that
there was a definite sale or offer to sell more than one year before the application
for the subject patent, and that the subject matter of the sale or offer to sell fully
anticipated the claimed invention." In re Mohurkar Double Lumen Hemodialysis
Catheter Patent Litigation, 71 F.3d 1573, 1576 (Fed. Cir. 1995). Likewise, to
-A0424-
FUTUPJ3LOGIC'S PROPOSED STATEMENT OF
- 2 - DECISION
CV IO-07678-JFW (DTBX)
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