Joint Appendix One

Case2:10-cv-07678-JFW-DTB Document 121 Filed 11/02/11 Page4of7 Page ID
#:2550
C. Prosecution of the '855 Patent
The application for the '855 Patent was filed with the United States Patent and Trademark
Office ("PTO") on March 29, 2002. In its first office action dated March 21, 2007, the PTO rejected
all pending claims of the '855 Patent based upon the Rowe '320 patent, and in some instances, a
combination of the Rowe '320 patent and other prior art.
On July 23, 2007, FutureLogic responded to the PTO's rejection, emphasizing the dual port
aspect of its alleged invention: "Applicant's main communication port couples a promotional
gaming printer to a gaming controller and a separate auxiliary communication port couples the
gaming promotional printer to a promotional controller."
On October 16, 2007, the PTO concluded its examination and issued its final rejection of all
claims of the '855 Patent application. In its rejection, the PTO relied on the '320 Rowe patent and
the Rowe '527 published application and, in some instances, combined the Rowe references with
other prior art.
On February 28, 2008, FutureLogic responded to the PTO's October 16, 2007 final office
action. In its response, Future Logic submitted the Declaration of Mark Meyerhofer in which he
attempted to antedate the '320 Rowe patent and the Rowe '527 published application. Specifically,
Mark Meyerhofer stated that "the claimed invention of the '855 patent was actually reduced to
practice in the United States of America before July 10, 2001 which is the earliest effective date of
Rowe '320 and Rowe '527." In support of his position, Mr. Meyerhofer provided detailed technical
drawings and photographs of the promotional printer that met the elements of the claimed
invention. The promotional printer described in Mr. Meyerhofer's declaration was the same as the
PSA-66-VM printer sold to Coca-Cola.
On May 13, 2008, the PTO again rejected all claims of the '855 Patent application. In its
third rejection, the PTO rejected the claims based upon the Rowe '065 published application and
the Nichols '241 patent and, in some instances, other prior art. In response, in a further effort to
antedate the new Rowe reference and other cited prior art, Mark Meyerhofer submitted another
declaration stating that the claimed invention had been reduced to practice before December 19,
2000.
The PTO issued a final office action on December 3, 2008, in which the PTO questioned
whether the claimed invention was either on sale or in public use as prohibited by 35 U.S.C. §
102(b). In response, Mr. Meyerhofer represented that "the present invention was neither made
accessible to the public, nor used commercially, nor offered for sale or sold before the critical date
of March 29, 2001." Based on Mr. Meyerhofer's representations, the PTO issued a Notice of
Allowance, and the '855 Patent was issued on September 29, 2009.
II. LEGAL STANDARD
Summary judgment is proper where "the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P.
56(a). The moving party has the burden of demonstrating the absence of a genuine issue of fact
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