Joint Appendix One

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,2:10-cv-O7678-JFW-DTB Document 65-2 Filed 10/07/11 Page 3 of 6 Page ID
#:1316
prove invalidity based on public use, an accused infringer must prove by clear and
convincing evidence that "(l) the invention was used in public and (2) file use was
not primarily experimental in purpose." Allied Colloids' Inc. v. Amer. Cyanamid
Co., 64 F.3d 1570, 1574 (Fed. Cir. 1995).
ff the accused infringer presents aprimafacie case of a commercial sale,
offer to sell, or a public use, "the patentee must simply produce sufficient rebuttal
evidence to prevent the party challenging the patent's validity from meeting its
burden of proving by clear and convincing evidence that the invention was in public
use" or on sale. See Lisle Corp., 398 F.3d at 1316 (addressing evidence required to
establish invalidity based on public use). Evidence that the public use or sale of the
patented device was primarily experimental negates invalidity under § 102(b). See,
e.g., Morion Corp., 239 F.3d 1258; Armco, hTc. v. Cyclops Colp., 791 F.2d 147, 150
_Fed. Cir. 1986) (reversing district court's grant of summary judgment of invalidity
because the district court failed to credit evidence that "provisions were made for
reporting back to [the patentee] the results of testing and that modifications made to
the alloy by Armco were based on these reports").
In this case, there is at least a genuine issue of material fact regarding
whether FutureLogic's development project was primarily experimental rather than
commercial. See Mono Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1258
(Fed. Cir. 2001).
Coca-Cola engineer Mr. Ahluwalia confirmed that the printer prototypes
provided by FutureLogic to Coca-Cola "were used for experimental purposes" and
were "never commercialized." (S. Ahluwalia Decl. 4.) Contemporaneous
documents establish that Coca-Cola and FutureLogic worked closely together to
determine whether the prototype printers 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
from the vending controller under conditions of varying power supply, varying
-A0425-
FIYI'URELOGIC' S PROPOSED STATEMENT OF
- 3 - DECISION
CV 10-07678-JFW (DTI3X)