U.S. government must face patent case over armored vehicles

(Reuters) - The U.S. government and defense contractors Oshkosh Corp and General Dynamics shouldn't have been allowed to escape claims that they infringed another contractor's patents for an armored vehicle, a U.S. appeals court said Friday.

A unanimous panel of the U.S. Court of Appeals for the Federal Circuit revived Ideal Innovations Inc's case at a lower court, finding factual questions about its research agreement with the U.S. Army justified a trial.

The U.S. Department of Justice, Oshkosh, and General Dynamics declined to comment. Ideal Innovations and its attorney Ahmed Davis of Fish & Richardson didn't immediately respond to a request for comment.

Ideal Innovations founder Bob Kocher began developing an urban utility vehicle in 2005 with heavy armor only in the areas most threatened by bullets and explosives. Kocher applied for related patents in 2005 and 2006.

The U.S. Army agreed to buy and test prototypes of vehicles assembled by a third party with Kocher's armor configuration in 2006 and signed a research-and-development agreement with Ideal Innovations to find the best armor for them in 2007. The research agreement included a provision that the parties would both have licenses to inventions "made" under it.

The Army successfully tested the vehicles shortly after the research agreement was signed, but ultimately chose not to buy Ideal Innovations' armor system.

Kocher said he learned U.S. military vehicles were using his armor configuration in 2012, and Ideal Innovations sued the government for infringing two patents in 2017. The government brought Oshkosh and General Dynamics into the case for supplying the vehicles.

The government argued it had a license to the inventions under the research agreement. U.S. Judge Edward Damich granted its bid for summary judgment last year, finding the invention was created during the term of the agreement because Ideal Innovations didn't know it would work before the 2007 test.

U.S. Circuit Judge Jimmie Reyna, joined by Circuit Judges Todd Hughes and Kara Stoll, reinstated the case Friday, finding factual disputes about whether the invention was "made" under the agreement justified sending the dispute to trial.

A reasonable person could find that Kocher's test of sample armor kits in 2006 "was sufficient to show that the invention worked for its intended purpose" and that the invention existed before the research agreement was signed, Reyna said.

Holmes Hawkins of King & Spalding represented General Dynamics, and Salvatore Tamburo of Blank Rome represented Oshkosh.

The case is Ideal Innovations Inc v. United States, U.S. Court of Appeals for the Federal Circuit, No. 20-2065.

For Ideal Innovations: Ahmed Davis of Fish & Richardson

For the U.S. government: Alex Hanna of the Department of Justice

For Oshkosh: Salvatore Tamburo of Blank Rome

For General Dynamics: Holmes Hawkins of King & Spalding