Fed Circ reverses armoured vehicle patent ruling
The US Court of Appeals for the Federal Circuit has ruled that the US Army and several contractors must face claims that they had infringed an inventor’s armoured vehicle patents.
The opinion, handed down on December 3, reversed a summary judgment from the US Court of Federal Claims (CFC) that resulted in a dismissal of Ideal Innovation’s action against the Army.
The patents are US patents 8,365,648 and 8,651,008, which are both titled “Highly survivable urban utility vehicle (HSUUV)”, invented by Robert Kocher, the chief executive of Ideal Innovations.
Kocher began developing the vehicle armour in 2005, creating a “wheeled armoured vehicle system with heavy armour installed only in specific areas that receive the greatest ballistic threat”. He applied for the two patents in 2005 and 2006 respectively.
The US Army agreed to purchase two vehicles outfitted with the armour configuration in August 2006 in order to test the technology and signed a research and development agreement (referred to as CRADA) with Ideal Innovations in 2007.
The agreement included a provision that the parties would both have licences to inventions "made" under it.
Despite successful testing and subsequent development efforts, the government decided not to purchase the system.
Kocher later attended an industry symposium in October 2012, where he learned that his patented inventions were being used on military vehicles. This lead him to eventually sue the government in the Federal Claims Court in June 2017 for patent infringement and misappropriation of trade secrets.
The case was eventually narrowed down to two causes of action for patent infringement, involving the ‘648 and ‘008 patents.
The US Army and other contractors moved to dismiss the two remaining actions in 2018, arguing that under terms of the research agreement (CRADA), the government had a licence to practice the patented invention.
This was contested by Kocher and Ideal Innovations, who argued that the inventions were “reduced to practice” one year prior to the CRADA when the first test fire happened in 2006.
The Federal Circuit agreed with Ideal Innovations, that the testing was sufficient to show that the invention worked for its intended purpose, remanding the case back to the CFC for further proceedings.
Writing for the three-judge panel, Federal Circuit Judge Jimmie Reyna said: “We conclude that the issue of testing is a genuine issue of material fact, and, therefore, summary judgment is inappropriate. We reverse and remand for further proceedings.”
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