Case: 20-2065 Document: 68 Page: 1 Filed: 12/03/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IDEAL INNOVATIONS, INC., RIGHT PROBLEM,
LLC, ROBERT KOCHER,
Plaintiffs-Appellants
v.
UNITED STATES, OSHKOSH CORPORATION,
GENERAL DYNAMICS LAND SYSTEMS, INC.,
FORCE PROTECTION, INC., GENERAL DYNAMICS
LAND SYSTEMS - FORCE PROTECTION, INC.,
Defendants-Appellees
______________________
2020-2065
______________________
Appeal from the United States Court of Federal Claims
in No. 1:17-cv-00889-EJD, Senior Judge Edward J.
Damich.
______________________
Decided: December 3, 2021
______________________
AHMED JAMAL DAVIS, Fish & Richardson P.C., Wash-
ington, DC, argued for plaintiffs-appellants. Also repre-
sented by ROBERT ANDREW SCHWENTKER, JACK WILSON.
ALEX HANNA, Commercial Litigation Branch, Civil Di-
vision, United States Department of Justice, Washington,
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2 IDEAL INNOVATIONS, INC. v. US
DC, argued for defendant-appellee United States. Also
represented by SCOTT DAVID BOLDEN, BRIAN M. BOYNTON,
GARY LEE HAUSKEN, RACHEL HICKS, LEE PERLA.
SALVATORE P. TAMBURO, Blank Rome LLP, Washing-
ton, DC, argued for defendant-appellee Oshkosh Corpora-
tion. Also represented by MEGAN R. WOOD.
HOLMES J. HAWKINS, III, King & Spalding, LLP, At-
lanta, GA, for defendants-appellees General Dynamics
Land Systems, Inc., Force Protection, Inc., General Dy-
namics Land Systems - Force Protection, Inc. Also repre-
sented by BRITTON F. DAVIS, Denver, CO.
______________________
Before REYNA, HUGHES, and STOLL, Circuit Judges.
Opinion for the court filed by Circuit Judge REYNA.
Concurring opinion filed by Circuit Judge HUGHES.
REYNA, Circuit Judge.
Ideal Innovations, Inc., Right Problem, LLC, and Rob-
ert Kocher appeal a grant of summary judgment by the
United States Court of Federal Claims that resulted in dis-
missal of their action. On appeal, Appellants argue that
the trial court, in reaching its summary judgment conclu-
sion, failed to consider all the evidence related to testing of
the invention. 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 fur-
ther proceedings.
BACKGROUND
History of the Invention
The patents at issue are U.S. Patent Nos. 8,365,648
and 8,651,008 (the “’648 Patent” and “’008 Patent”, respec-
tively). Both stem from U.S. Provisional Application
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IDEAL INNOVATIONS, INC. v. US 3
No. 60/708,771 (filed Aug. 17, 2005) and U.S. Application
No. 11/507,089 (filed Aug. 21, 2006). They share the same
title, “Highly survivable urban utility vehicle (HSUUV),”
the same specification, and the same inventor, Appellant
Robert Kocher, who is the president and chief executive of-
ficer of Appellants Ideal Innovations, Inc. (“I-3”) and Right
Problem, LLC. See J.A. 58–59, 90–106.
Kocher began developing the invention in early 2005.
J.A. 2817. At the time the applications for the underlying
patents were filed, there existed a need for improved ar-
mored vehicles that could protect occupants from armor-
piercing munitions—namely, explosively formed projec-
tiles (“EFPs”). Id. The patents relevant to this appeal gen-
erally addressed that need in disclosing a wheeled armored
vehicle system with heavy armor installed only in specific
areas that receive the greatest ballistic threat. See, e.g.,
J.A. 98 (claim 1 of the ’648 Patent). Configuring armor in
this manner protects vehicle occupants from harm, even
from EFPs, while maintaining the vehicle’s mobility by
keeping weight down. J.A. 97–98 (“The [invention] pro-
vides a novel way to balance the concerns of armor, mobil-
ity and cost.”).
In January 2006, Kocher approached the Army’s Rapid
Equipping Force (“REF”) with a proposal to implement his
armor configuration on a commercially available vehicle
chassis. J.A. 62. On March 10, 2006, Kocher conducted a
test fire on sample armor kits (a.k.a. coupons), which in-
volved firing EFPs at a configuration of armor kits to test
whether the armor could withstand the attacks. J.A. 2823.
The test showed that some armor could withstand EFP at-
tacks. Id. On August 28, 2006, REF awarded Kocher a
contract (“REF Contract”) for the purchase of two prototype
vehicles—one to undergo a test fire and the other to drive
around a test course. J.A. 64; 2449.
In July 2006, while the REF Contract was being final-
ized, REF sought input from the Army Research
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4 IDEAL INNOVATIONS, INC. v. US
Laboratory (“ARL”) on the type of armor to be used on the
vehicles. J.A. 2452, 2733. At REF’s request, ARL and I-3
entered into a Cooperative Research and Development
Agreement (“CRADA”) to select the best armor to use on
I-3’s vehicle. J.A. 1029–54, at 1031–32. Pursuant to the
terms of the CRADA, I-3 and ARL exchanged a mutual li-
cense to practice any invention that was “Made” in perfor-
mance of work under the CRADA. J.A. 1041. The CRADA
defines “Made” as referring to “the conception or first ac-
tual reduction to practice” of an invention.” J.A. 1030–31.
Relevant to the issue of reduction to practice, the pro-
totype vehicles purchased under the REF Contract were
assembled by a third-party, Ceradyne. J.A. 2822. The ex-
act date Ceradyne completed assembly remains unclear,
but Kocher maintains that the vehicles were fully assem-
bled by February 1, 2007. J.A. 2822–23. There was also
some confusion about the date on which the CRADA was
executed because the last signatory failed to date his sig-
nature. J.A. 3264–65. The parties later stipulated that the
CRADA was fully executed on February 10, 2007.
J.A. 3353–54.
On March 5, 2007, REF performed a test fire on the
prototype vehicles that were assembled by Ceradyne.
J.A. 64. Like the armor kit test fire of the year before, it
was a success—the fully assembled prototype withstood at-
tacks from EFPs. J.A. 2805. Despite this success and sub-
sequent development efforts, the government ultimately
rejected I-3’s vehicle proposals. J.A. 66–67.
Procedural History
In October 2012, Kocher attended an industry sympo-
sium and found that his patented inventions were being
used. J.A. 378. On June 29, 2017, Kocher sued the govern-
ment in the United States Court of Federal Claims (“CFC”)
for patent infringement and misappropriation of trade se-
crets. J.A. 58–80. After a round of dismissal motions, the
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IDEAL INNOVATIONS, INC. v. US 5
CFC narrowed the case to two causes of action for patent
infringement of the ’648 and ’008 Patents. J.A. 1–21.
On October 5, 2018, Appellees 1 moved to dismiss the
remaining two causes of action pursuant to Rule 12(b)(6),
arguing that under the terms of the CRADA, the govern-
ment had a license to practice the patented invention be-
cause the invention was actually reduced to practice during
the term of the CRADA—specifically, on March 5, 2007,
when the prototype vehicles were tested. J.A. 933–36.
Kocher maintained that the invention was reduced to prac-
tice before the date of execution of the CRADA, and that
“resolution of that factual question [wa]s inappropriate on
a motion to dismiss.” Ideal Innovations, Inc. v. USA,
No. 1:17-cv-00889-EJD, Dkt. No. 52, at 21 (Dec. 7, 2018).
The CFC denied the motion to dismiss, noting that the ar-
guments were more appropriate for a motion for summary
judgment. J.A. 1150.
On July 3, 2019, Appellees filed a motion for dismissal
under Rule 12(b)(1) or, alternatively, for summary judg-
ment. J.A. 2393–765. In their motion, Appellees argued
that the patents were licensed to the government because
they were first reduced to practice during the term of the
CRADA. J.A. 2423–26. In opposition, Appellants main-
tained that “a genuine dispute as to a material fact ex-
ist[ed]” because “the March 10, 2006 test fire [w]as the first
actual reduction to practice date.” Ideal Innovations,
No. 1:17-cv-00889-EJD, Dkt. No. 79, at 9–10 (July 31,
2019); see also J.A. 2811. In other words, Appellants
1 Appellees Oshkosh Corporation, General Dynam-
ics Land Systems, Inc., Force Protection, Inc., and General
Dynamics Land Systems – Force Protection Inc. intervened
as third-party defendants after the government served no-
tices pursuant to Rule of the Court of Federal Claims
(“Rule”) 14. J.A. 49–50.
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6 IDEAL INNOVATIONS, INC. v. US
contended that the inventions were reduced to practice
about one year prior to the effective date of the CRADA.
On October 4, 2019, the CFC issued an order acknowl-
edging “a genuine dispute of material fact as to the effec-
tive date of the CRADA” and ordering “a mini-trial on these
issues only.” J.A. 3253. The CFC permitted limited discov-
ery on the issue of the CRADA’s effective date. J.A. 3268.
At the time, Appellants informed the CFC that “obviously
[they] would be prepared to provide testimony from
[Kocher] and others with regard to the reduction of practice
and the ancillary issues that go with that, if that’s neces-
sary.” J.A. 3285. But the CFC confirmed that “the point of
the mini-trial” was to determine only “the effective date of
the CRADA.” Id.
On March 13, 2020, after brief discovery regarding the
effective date of the CRADA, the parties filed a stipulation
agreeing that the CRADA was fully executed no later than
February 20, 2007. J.A. 3288. The stipulation also set
forth the parties’ respective positions in light of the agreed-
upon facts. Appellants requested a hearing in lieu of a
mini-trial:
Simply put, drawing all reasonable inferences of
fact in favor of [Appellants], the existing record
compels, inter alia, the conclusions: (i) that prior
testing of the armor on March 10, 2006 established
that the armor would work for its intended purpose;
and (ii) that the claims were reduced to practice by
virtue of the armored vehicle that was built before
Feb. 10, 2007.
J.A. 3291–92 (emphasis added) (internal citations omit-
ted). On March 16, 2020, the CFC stayed further discovery
in light of the stipulation. J.A. 3296.
The hearing requested by Appellants did not occur, nor
did the mini-trial. On May 21, 2020, the CFC denied sum-
mary judgment because it determined there was “a
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IDEAL INNOVATIONS, INC. v. US 7
genuine issue of material fact regarding when the inven-
tion was first actually reduced to practice.” J.A. 3299. Sig-
nificantly, the CFC found “that the assembly of the
armored vehicle as described in the patents [wa]s neces-
sary to fulfill the requirement of a physical embodiment
and that actual testing of the armored vehicle [wa]s neces-
sary to determine whether it work[ed] for its intended pur-
pose.” J.A. 3305 (emphases added). The CFC denied
summary judgment specifically on the basis that the evi-
dence did not establish whether the prototype vehicle was
fully assembled before the CRADA’s effective date.
J.A. 3305–06.
Although the CFC denied summary judgment, it did
not lift the stay on discovery. Instead, the CFC ordered
another “mini-trial to determine the date of the first actual
reduction to practice of the invention.” J.A. 3310. In doing
so, the CFC expressly “found” that “[t]he March 2006 test
was a test of armor, not of the invention,” and “[a]n actual
test is necessary to prove that the prototype of the armored
vehicle works for its intended purpose.” Id. The CFC
added, “These findings form the basis for the mini-trial
and, at the trial, may not be disputed.” Id. (emphasis
added).
On May 28, 2020, the CFC held a status conference to
discuss dates for the mini-trial on the issue of reduction to
practice. Id.; J.A. 3313–19. During the status conference,
the CFC posed the following:
[T]he testing had to be of an assembled vehicle and
it had to be in conditions that sort of replicated
what you would find in the field. . . . [I]s there any
evidence of a test, the kind of test that I require in
my opinion, that occurred prior to the effective date
on the CRADA, which is February 20th, 2007?
J.A. 3314. Appellants admitted they would not “be able to
present evidence to satisfy that standard,” id., but main-
tained that whether a POSA “would have understood that
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8 IDEAL INNOVATIONS, INC. v. US
the vehicle would actually work for its intended purpose,”
based on the coupon test fire, was “a factual question,”
J.A. 3315. 2 The CFC acknowledged that Appellants were
“correct that there is a factual element to the decision of
what is necessary to prove that [an invention is] fit for its
intended purpose.” J.A. 3319. Thus, the CFC agreed to let
Appellants “go forward with their line of argument with re-
gard to testing” at the mini-trial. Id.
On June 2, 2020, the CFC ordered supplemental brief-
ing regarding “what evidence the [CFC] is permitted to con-
sider in deciding the intended purpose of the invention.”
J.A. 3332–34. In the same order, the CFC noted that, “[i]n
proving that the invention worked for its intended pur-
pose,” Appellants would need to “establish the level of test-
ing (if any), that is required to prove this element.”
J.A. 3334. Appellants filed their supplemental brief on
June 16, 2020. See J.A. 57. And on June 18, 2020, the par-
ties filed a second stipulation, agreeing that the CRADA’s
effective date was February 10, 2007. J.A. 3353–54.
On June 23, 2020, Appellees filed their response sup-
plemental brief with a 140-page appendix. J.A. 3363–504.
The appendix included four new declarations directed to
the scope of testing required for a POSA to determine that
the invention would work for its intended purpose.
J.A. 3479–504. Appellees urged the CFC to “determine the
level of testing required to show whether the alleged
2 Also, at the May 28, 2020 status conference, Appel-
lants’ counsel represented that more evidence could likely
be obtained to show that a full-scale test was not required
for reduction to practice, but that Appellants lacked an ad-
equate opportunity to seek such discovery because the first
discovery period was cut short by Appellees’ motion which
resulted in a stay, and the second discovery period was lim-
ited in subject-matter to the issue of the CRADA’s effective
date. J.A. 3316.
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IDEAL INNOVATIONS, INC. v. US 9
invention . . . works for its intended purpose.” J.A. 3359.
Highlighting their newly submitted declarations, Appel-
lees argued that “the evidence clearly supports the finding
that the alleged invention . . . requires actual testing” of a
fully assembled vehicle. J.A. 3359–61. Appellees argued
that a mini-trial was not necessary and asked the CFC to
“grant [their] pending motion for summary judgment.”
J.A. 3361. The record does not reflect that the CFC ever
authorized or invited any response by Appellants to Appel-
lees’ response supplemental brief. See J.A. 3334.
On July 3, 2020, the CFC issued an order cancelling
the mini-trial and characterizing Appellees’ supplemental
brief as a “renewed” request for summary judgment.
J.A. 36–39. The CFC “decide[d] it was overly indulgent in
allowing [Appellants] to raise an argument at the mini-
trial that it could have raised in its briefs but did not,” and
it reasserted its finding that reduction to practice required
the invention “to be tested in the way determined by the
[CFC],” i.e., by testing a fully assembled vehicle. J.A. 38.
Because no testing of a fully operational armored vehicle
took place before the CRADA’s effective date, the CFC dis-
missed the action on summary judgment and advised Ap-
pellants they could “appeal to the Federal Circuit.” Id.
Appellants challenge the CFC’s grant of summary judg-
ment. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(3).
STANDARD OF REVIEW
“We review a grant of summary judgment by the Court
of Federal Claims de novo.” FastShip, LLC v. United
States, 892 F.3d 1298, 1302 (Fed. Cir. 2018). Summary
judgment is appropriate where the movant shows that
there is no genuine dispute as to any material fact, and that
the movant is entitled to judgment as a matter of law. Id.;
RCFC 56(a). At the summary judgment stage, we view the
facts supported by evidence, as well as all inferences drawn
therefrom, in the light most favorable to the non-moving
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10 IDEAL INNOVATIONS, INC. v. US
party. United States v. Diebold, Inc., 369 U.S. 654, 655
(1962). A non-moving party can defeat summary judgment
by identifying an “evidentiary conflict created on the rec-
ord” as to any material issue of fact. See Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d
831, 836 (Fed. Cir. 1984).
DISCUSSION
Actual reduction to practice, at issue here, occurs when
an inventor (1) constructs an embodiment or performs a
process that meets all the limitations of the claimed inven-
tion, and (2) determines that the invention would work for
its intended purpose. E.I. du Pont De Nemours & Co.
v. Unifrax I LLC, 921 F.3d 1060, 1075 (Fed. Cir. 2019) (cit-
ing Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir.
1998)). Whether an invention has actually been reduced to
practice is a legal question based on subsidiary factual
findings. Taskett v. Dentlinger, 344 F.3d 1337, 1339
(Fed. Cir. 2003).
“Testing is not itself a requisite for reduction to prac-
tice, although it may be a requisite for showing that a pro-
totype demonstrates that an invention is suitable for its
intended purpose.” Slip Track Sys. v. Metal-Lite, Inc., 304
F.3d 1256, 1267 (Fed. Cir. 2002). Determining the in-
tended purpose of an invention is a legal question consid-
ered in light of the claims and specification. Manning
v. Paradis, 296 F.3d 1098, 1102-04 (Fed. Cir. 2002).
Whether testing is necessary to determine an invention
works for its intended purpose and whether a given test
method is sufficient are questions of fact. Barry v. Med-
tronic, Inc., 914 F.3d 1310, 1322 (Fed. Cir. 2019); z4 Techs.,
Inc. v. Microsoft Corp., 507 F.3d 1340, 1349 (Fed. Cir.
2007); see also Scott v. Finney, 34 F.3d 1058, 1061
(Fed. Cir. 1994) (“[T]he testing requirement depends on the
particular facts of each case, with the court guided by a
common[-]sense approach in weighing the sufficiency of the
testing.”).
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IDEAL INNOVATIONS, INC. v. US 11
Weighing evidence and performing factfinding at sum-
mary judgment “is an inappropriate exercise, at either the
appellate or the district court level.” Lemelson v. TRW,
Inc., 760 F.2d 1254, 1260 (Fed. Cir. 1985) (citing Fountain
v. Filson, 336 U.S. 681, 683 (1949)); accord Spigen Korea
Co. Ltd. v. Ultraproof, Inc., 955 F.3d 1379, 1384 (Fed. Cir.
2020) (“[A] trial court is not free to find facts at the sum-
mary judgment phase.”). If a reasonable factfinder could
find in favor of the non-moving party, “a trial court must
stay its hand and deny summary judgment.” Spigen Korea,
955 F.3d at 1384.
The CFC determined that “[t[he intended purpose of
the invention is to protect soldiers against various kinds of
explosives while preserving mobility of the vehicle.”
J.A. 30. Appellants assert that “[t]he CFC legally erred by
not defining the intended purpose of the invention as plac-
ing armor in the most vulnerable areas.” BB 31. We agree
with the CFC’s view of the intended purpose of the inven-
tion. Looking to the claims and specification as a whole for
guidance, we conclude that the CFC did not err in deter-
mining the intended purpose of the invention.
Appellants also contend that the CFC erred by resolv-
ing an issue of fact genuinely in dispute: whether the pre-
CRADA testing proved the invention worked for its in-
tended purpose. Appellants’ Br. 33–36. We agree. The
CFC found that “[t]he March 2006 [coupon] test was a test
of armor, not of the invention,” and that “[a]n actual test
[of a fully assembled vehicle was] necessary to prove that
the prototype of the armored vehicle works for its intended
purpose.” J.A. 3310. Relying on those factual findings, the
CFC concluded that the invention was not reduced to prac-
tice before the CRADA’s effective date because no fully as-
sembled vehicle was tested before that date. J.A. 36–39.
Appellees contend that a fully assembled vehicle was
required to test whether the invention would work for its
intended purpose. Appellants maintain that the March
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12 IDEAL INNOVATIONS, INC. v. US
2006 coupon testing was sufficient because Kocher testified
that the coupon testing proved the armor could withstand
attacks from EFPs, and it was easy to calculate whether a
commercially available vehicle chassis—with a known
weight capacity—could be mobile while supporting the
weight of the armor. J.A. 2823. According to Appellants, a
reasonable factfinder could find that the coupon testing
was sufficient to show that the invention worked for its in-
tended purpose. See generally Spigen Korea, 955 F.3d
at 1384.
We agree with Appellants. We cannot say that no rea-
sonable fact finder could rely on Kocher’s rather common-
sense testimony to demonstrate that the coupon testing
was sufficient to show that the invention would protect sol-
diers against various kinds of explosives while preserving
mobility of the vehicle. Accordingly, the evidence demon-
strates a genuine dispute about the scope of testing re-
quired for a POSA to determine the invention would work
for its intended purpose. An inventor’s factual testimony
regarding reduction to practice must be corroborated by
some other evidence. See Unifrax I, 921 F.3d at 1076 (cit-
ing Price v. Symsek, 988 F.2d 1187, at 1194 (Fed. Cir.
1993)). But “‘[t]here is no particular formula’ required for
corroboration, and instead, a ‘rule of reason’ analysis ap-
plies to the evaluation of all pertinent evidence.” Id. (quot-
ing Singh v. Brake, 317 F.3d 1334, 1341 (Fed. Cir. 2003)).
For example, here, Kocher’s declaration testimony is cor-
roborated by the existence of the REF Contract. A reason-
able factfinder could conclude that REF issued a purchase
order for the prototype vehicles based on its conclusion that
the armor was sufficiently tested to expect that the inven-
tion worked for its intended purpose. J.A. 2649, REF Con-
tract; see also J.A. 2682–83. Although the government may
have desired more testing, “[r]eduction to practice does not
require that the invention, when tested, be in a commer-
cially satisfactory stage of development.” Scott, 34 F.3d
at 1061 (internal quotation marks omitted). Indeed,
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IDEAL INNOVATIONS, INC. v. US 13
“[t]esting need not show utility beyond a possibility of fail-
ure, but only utility beyond a probability of failure.” Id.
at 1062.
We hold that the CFC erred in granting summary judg-
ment because a genuine dispute exists as to an issue of ma-
terial fact—namely, whether a POSA would have known,
based on the coupon testing, that the invention would work
for its intended purpose. See Barry, 914 F.3d at 1322;
z4 Techs., 507 F.3d at 1349. The CFC erred when it
granted summary judgment based on its resolution of that
disputed factual issue. See Spigen Korea, 955 F.3d at 1384
(citing Lemelson, 760 F.2d at 1260).
CONCLUSION
We reverse the CFC’s grant of summary judgment and
remand for further proceedings consistent with this opin-
ion.
REVERSED AND REMANDED
COSTS
Costs to Appellants.
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NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IDEAL INNOVATIONS, INC., RIGHT PROBLEM,
LLC, ROBERT KOCHER,
Plaintiffs-Appellants
v.
UNITED STATES, OSHKOSH CORPORATION,
GENERAL DYNAMICS LAND SYSTEMS, INC.,
FORCE PROTECTION, INC., GENERAL DYNAMICS
LAND SYSTEMS - FORCE PROTECTION, INC.,
Defendants-Appellees
______________________
2020-2065
______________________
Appeal from the United States Court of Federal Claims
in No. 1:17-cv-00889-EJD, Senior Judge Edward J.
Damich.
______________________
HUGHES, Circuit Judge, concurring.
I concur in the judgment. I agree that the sufficiency of
testing to show reduction to practice is a factual issue that
should not have been decided at summary judgment and
that Appellants preserved—but just barely—that argu-
ment. I write separately, however, to emphasize that I do
not fault the trial court for this error. In failing to make
clear that the issue was factual in nature, and not legal,
Case: 20-2065 Document: 68 Page: 15 Filed: 12/03/2021
2 IDEAL INNOVATIONS, INC. v. US
Appellants invited such error. Moreover, although the trial
court should have decided sufficiency of testing as a fac-
tual, rather than a legal issue, the record evidence would
have fully supported its decision as a matter of fact.
I
On March 10, 2006, Appellant Robert Kocher con-
ducted a test fire on armor coupons alone. J.A. 2823. A fully
assembled armored vehicle prototype was not tested until
March 2007, after the stipulated February 10, 2007 execu-
tion date of the CRADA. J.A. 64, 3288–89. Appellants now
assert that the coupon testing along with Mr. Kocher’s own
testimony, some photographs of an assembled vehicle, and
weight calculations that allegedly show that the vehicle
could have been mobile are sufficient to demonstrate that
the invention would have worked for its intended purpose
and was therefore reduced to practice in 2006. But Appel-
lants never focused on testing as a factual dispute that
should have precluded a finding of summary judgment be-
fore the Court of Federal Claims. And their failure to do so
induced the trial court’s erroneous legal finding.
The proceedings before the trial court focused on the
effective date of the CRADA, rather than the sufficiency of
the coupon testing. Appellees initially moved for Rule
12(b)(6) dismissal, contending that the government had an
express license to practice the invention under the CRADA.
J.A. 933–36. Appellees contended the CRADA was signed
and executed on or before December 21, 2006. Appellees
further argued that the invention was actually reduced to
practice on the date the fully assembled prototype vehicle
was tested, March 5, 2007, during the term of the CRADA.
J.A. 933–36. In response, Appellants argued that Decem-
ber 2006 was “not the proper measuring date for a reduc-
tion to practice to fall within the” CRADA, because while
Mr. Kocher had signed the agreement on December 10,
2006, the government representative’s signature was un-
dated. Response to Motion to Dismiss at 21, Ideal
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IDEAL INNOVATIONS, INC. v. US 3
Innovations, Inc. v. United States, No. 1:17-cv-00889 (Fed.
Cl. Dec. 7, 2018), ECF No. 52. Instead, Appellants con-
tended that the government did not sign and execute the
CRADA until February 10, 2007 or later. Id. at 22. The trial
court denied Appellees’ motion to dismiss because their ar-
guments were “more properly considered in a motion for
summary judgment.” J.A. 1150.
Appellees then moved for dismissal under Rule 12(b)(1)
or, alternatively, for summary judgment, again arguing
that the patents were first reduced to practice in March
2007, during the term of the CRADA and therefore under
the license. J.A. 2423–31. In response, Appellants argued
that summary judgment was inappropriate because sev-
eral genuine disputes of material facts existed, including
the scope of the CRADA and its effective date, and the date
of the first actual reduction to practice, which it identified
as the March 2006 coupon test fire. J.A. 2810–12.
The trial court issued an order on October 4, 2019, stat-
ing that Appellants had “identified a genuine dispute of
material fact as to the effective date of the CRADA” and
that it would hold a mini-trial on that issue only. J.A. 3253.
It then held a status conference on October 9, 2019, that
focused primarily on the disputed effective date of the
CRADA. J.A. 3263–86. Appellants did note at the end of
the conference that they “would be prepared to provide tes-
timony from [Mr. Kocher] and others with regard to the re-
duction to practice and the ancillary issues that go with
that, if that’s necessary.” J.A. 3285. But they did not spe-
cifically suggest that the mini-trial should extend to the
testing issue. The parties conducted discovery and then is-
sued a joint stipulation that the effective date of the
CRADA was no later than February 20, 2007 (later
changed to February 10, 2007). J.A. 3288–89. Given that
stipulation, Appellees argued that the only genuine dispute
of material fact that the trial court had identified had been
resolved, and thus asked the court to rule on its motion for
summary judgment. J.A. 3292. Appellants also, for the first
Case: 20-2065 Document: 68 Page: 17 Filed: 12/03/2021
4 IDEAL INNOVATIONS, INC. v. US
time, directly requested a hearing on the issue of whether
the 2006 coupon testing established that the invention
would work for its intended purpose and was reduced to
practice. J.A. 3292.
The trial court denied summary judgment because it
found that there was “a genuine issue of material fact re-
garding when the invention was first actually reduced to
practice.” J.A. 3299. In doing so, it determined that “[t]he
intended purpose of the invention is to protect soldiers
against various kinds of explosives while preserving the
mobility of the vehicle,” J.A. 3305, a legal conclusion with
which we have found no error. Maj. Op. at 11. Given that
purpose and the common-sense approach of Scott v. Finney
in determining the sufficiency of testing to show reduction
to practice, the trial court concluded that “[a]n actual test
is necessary to prove that the prototype of the armored ve-
hicle works for its intended purpose.” J.A. 3305 (citing
Scott v. Finney, 34 F.3d 1058, 1063 (Fed. Cir. 1994)), 3310.
This legal conclusion, as stated in the majority, was er-
ror because the sufficiency of testing is a question of fact,
not law. Maj. Op. at 12–13. But Appellants did not make
clear this was a question of fact prior to the summary judg-
ment ruling. In denying Appellees’ motion for summary
judgment, the trial court did note Appellants’ assertion
that “a fully operational, painted, tested, and delivered
BULL was shown no later than February 22, 2007.” J.A.
3305. But the court pointed out problems with that asser-
tion, including that Appellants only offered photographs of
the BULL in various states of assembly and Mr. Kocher’s
testimony as supporting evidence, which, the court found,
did not alone “prove that the BULL ha[d] been ‘tested.’”
J.A. 3303. The court “believe[d] that this [testing] assertion
[was] based on the armor tests in March 2006 and/or on the
mere assembly of the armored vehicle . . . . Surely if there
were an actual test of the invention’s workability, [Appel-
lants] would proffer such evidence. But the [c]ourt [was]
not certain” from the briefing alone. J.A. 3306.
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IDEAL INNOVATIONS, INC. v. US 5
At a status conference following its ruling on the sum-
mary judgment motion, the trial court asked Appellants if
there was evidence of the kind of testing that it required—
i.e., actual testing of the armored vehicle. J.A. 3314. Appel-
lants responded that if an actual test of a fully assembled
armored vehicle prior to the execution of the CRADA was
necessary, then they were “not going to be able to present
evidence to satisfy that standard before March of 2007.”
J.A. 3314. While Appellants took issue with the testing re-
quirement, they did not specifically identify it as a genuine
issue of material fact that should preclude summary judg-
ment, even when asked by the court:
THE COURT: So—but you’re disputing, I
guess, the fact that by holding that you had to have
the vehicle with the armored configuration in the
patent . . . shot at, is one way of providing that it
actually works for its intended purpose. Is that cor-
rect?
[APPELLANTS]: Right. That is one way. It’s a
sufficient but not a necessary way to do
it. . . . [W]hether [a POSA], looking at the testing,
even if it wasn’t a fully assembled device, would
have understood that it would work for its intended
purpose . . . is, in effect, what we would be chal-
lenging, Your Honor.
And so I guess I would say that it’s both—be-
cause issues of reduction to practice are—it’s a
question of law based on underlying issues of
fact . . . our dispute would be probably on both of
those fronts, that we have sufficient facts to meet
our preponderance of the evidence standard [prior
to the date of execution of the CRADA] and that
that is because a fully constructed vehicle as a mat-
ter of law, we would say, is a requirement in the pre-
vailing law.
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6 IDEAL INNOVATIONS, INC. v. US
J.A. 3315 (emphases added). The court pointed out that it
“wish[ed] that in the submissions that the [Appellants]
would have seized upon the [Appellees’] argument . . . that
even if the physical embodiment was there, that it still had
to be tested for its intended purpose,” and that “there were
opportunities to bring up these arguments during the sum-
mary judgment submissions and they weren’t brought up.”
J.A. 3319. Still, the court acknowledged that Appellants
are “correct that there is a factual element to the decision
of what is necessary to prove that it[’]s fit for its intended
purpose” and allowed them to “go forward with their line of
argument with regard to testing.” J.A. 3319.
In an order issued on June 2, 2020, the trial court
granted Appellants an opportunity to brief an argument
that full assembly of the vehicle, coupled with the March
2006 armor coupon testing, was sufficient to prove the ve-
hicle worked for its intended purpose. But it again pointed
out that the argument was missing from the Appellants’
summary judgment brief. J.A. 3332. In their supplemental
briefing on intended purpose, Appellants argued that the
successfully tested armor coupons, plus the known weight
of the armor and the carrying capacity of the vehicle, would
show that the vehicle worked for its intended purpose. J.A.
3349. Appellees responded that the “alleged invention, a
new kind of armored vehicle, requires actual testing ‘under
circumstances approaching actual use conditions’ because
the problem being solved is complex and has many varia-
bles.” J.A. 3359 (citing Scott, 34 F.3d at 1063). The trial
court treated Appellees’ response as a renewed motion for
summary judgment and granted it, finding that the court
had been “overly indulgent” in allowing Appellants to raise
an argument at the mini-trial that they did not originally
brief. J.A. 41–44.
II
Appellants should have made clear that the necessity
and sufficiency of testing was a factual issue, not legal, at
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IDEAL INNOVATIONS, INC. v. US 7
the trial court. Appellants’ arguments primarily focused on
the effective date of the CRADA as the key factual issue,
not whether the March 2006 coupon testing was a reduc-
tion to practice. While it is true that the trial court wanted
to focus on the effective date of the CRADA as a genuine
issue of material fact, Appellants never fully briefed the is-
sue of testing nor clearly challenged it as a factual issue to
the trial court, hardly placing the court on notice that there
was a factual dispute regarding coupon testing as sufficient
testing to reduce to practice.
The trial court’s intended-purpose finding, which is a
legal conclusion, is correct—“[t]he intended purpose of the
invention is to protect soldiers against various kinds of ex-
plosives while preserving the mobility of the vehicle.” J.A.
30; Maj. Op. at 11. And though the trial court erred in con-
cluding that an actual test of a prototype armored vehicle
was necessary as a matter of law, it could have determined
that no reasonable jury would have found that Appellants
had shown that the vehicle would work for its intended
purpose as of 2006.
To support its assertion that “a fully-operational,
painted, tested, and delivered BULL was shown by Febru-
ary 22, 2007,” Appellants cited only to Mr. Kocher’s decla-
ration and photos of a vehicle in various states of assembly.
J.A. 2802 (citing J.A. 2583–86, 2598–2604, 2822–23).
Asked at oral argument whether there was additional evi-
dence beyond the coupon testing, declaration, and photos,
Appellants could only point to an email from an employee
of Ideal Innovations that “goes to the issue of mobility.”
Oral Argument at 34:30–35:29, https://oralarguments.cafc.
uscourts.gov/default.aspx?fl=20-2065_06082021.mp3. This
email merely states that Appellants “ha[d] not come to
grips yet with the total weight of the system but the [Gross
Vehicle Weight] for the [commercial vehicle chassis] is
33,000 pounds,” and the current vehicle weight was “some-
where in the 30 to 31,000 pound range of ‘STUFF’ including
armor, crew equipment, payload, etc.” J.A. 2490–91.
Case: 20-2065 Document: 68 Page: 21 Filed: 12/03/2021
8 IDEAL INNOVATIONS, INC. v. US
The trial court could have reasonably concluded that
no reasonable jury could find that Appellants had shown
that the invention would have worked for its intended pur-
pose based solely on testing of pre-existing armor, uncer-
tain weight calculations, and the inventor’s own testimony,
especially when the intended purpose was “to protect sol-
diers against various kinds of explosives while preserving
the mobility of the vehicle.” J.A. 30. Mr. Kocher himself em-
phasized that “the prevailing consensus was that it would
be impossible to design a cost-effective, functional wheeled
vehicle that could provide protection from [explosively
formed projectiles],” and that his solution to this impossible
problem “was to integrate and configure this heavy armor
on a vehicle that would protect the personnel from the
unique angles from which [explosively formed projectiles]
were fired without adding so much weight of armor that it
could not be carried.” J.A. 3406 (emphases added). Alt-
hough the vehicle was created for both mobility and protec-
tion, the record does not contain any evidence of mobility
or protection tests done where the test armor was actually
integrated and configured on the vehicle—i.e., as a fully as-
sembled prototype.
Because the trial court should have considered the suf-
ficiency of the testing as a factual issue, rather than a legal
one, I concur in the judgment.