Joint Appendix One

Case 2:10-cv-07678-JFW-DTB Document 121 Filed 11/02/11 Page 2 of 7 Page ID
#:2548
In its Answer and Counterclaims filed on December 27, 2010, Defendant alleged five
affirmative defenses and two counterclaims including the invalidity of the '855 Patent. Defendant
moves for summary judgment on its affirmative defense and counterclaim of invalidity pursuant to
35 U.S.C. § 102(b) because an embodiment of the claimed invention was offered for sale, sold, or
in public use more than one year prior to the patent's effective filing date. FutureLogic contends
that its sales were experimental, and not commercial in nature, and thus subject to the
experimental use exception.
A. Reduction to Practice
By January 21, 1998, FutureLogic had developed a prototype gas pump printer identified by
model number PMC-2010-A, with the intention of offering it to Tokheim Manufacturing Company
("Tokheim"), for whom FutureLogic had developed and sold other gas pump printers. The PMC-
2010-A printer was designed to print vouchers and coupons using data received from two different
sources -- namely, a gas pump controller and a network promotional controller. Although the
PMC-2010-A printer was never offered to Tokheim or marketed by FutureLogic, the PMC-2010-A
printer embodied the claims of the '855 Patent, and thus, the claimed invention was reduced to
practice by January 21, 1998.
B. Development Project with Coca-Cola
In 1997, FutureLogic began working with the Coca-Cola Company ("Coca-Cola") on a
project to develop a coupon printer to be used in its vending machines. FutureLogic was
introduced to Coca-Cola by Dave Uland, president of a labeling equipment company known as
Interleave Systems which had worked on previous projects for Coca-Cola Coca-Cola had initially
approached Interleave and expressed an interest in developing a custom coupon printer for use in
its vending machines. Mr. Uland recommended Mark Meyerhofer, who was then president of
FutureLogic, to develop the custom coupon printer.
On March 20 and March 31, 1997, FutureLogic signed two Non-Disclosure agreements
prepared by Coca-Cola Neither agreement explicitly imposed nondisclosure obligations on Coca-
Cola. However, the information exchanged between FutureLogic, Inc. and Coca-Cola during the
printer development project was treated as confidential by all parties.
FutureLogic's and Coca-Cola's design for the coupon printer evolved between 1997 and
2000. Ultimately, FutureLogic designed a prototype coupon printer (the "PSA-66-VM Printer") for
Coca-Cola that had separate communication ports which allowed the printer to receive data from
separate sources to print vouchers and coupons. It is undisputed that the PSA-66-VM Printer
embodied the claims of the '855 patent.
On October 18, 1999, FutureLogic sent a product quotation to Coca-Cola for the PSA-66-
VM Printer, erroneously referred to as the "PSA-66-CC" printer, which included prices for
production units based upon quantity, ranging from $402.50 per unit to $457.50 per unit, and
prices for development of prototypes in two phases: (t) $23,500 for prototype fees and delivery of
2 alpha systems and 2 beta systems, and (2) $850 for delivery of each additional beta system.
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