the third sentence is not a "strong counterbalancing reason" but, rather, an accident of draftsmanship which is best understood by reading "the total estimated decrease in the Contractor's cost of performance" in slightly expanded form as "the total estimated decrease in the cost to the Government of performance by the Contractor." That is not a difficult transposition and it seems to be to fit better than the strict and literal construction. SKELTON, Judge, and BENNETT, Judge, joins in the foregoing dissenting opinion.

CHAPTER SEVEN

PATENTS & DATA

Section 1. Patents

EASTERN ROTORCRAFT CORP.

181 Ct. Cl. 299 (1967)

384 F. 2d 429

DURFEE, Judge, delivered the opinion of the court:

The Eastern Rotorcraft Corporation, a Pennsylvania Corporation owning the patent involved in this litigation, sues, under 28 U.S.C. ¶ 1498, to recover the "reasonable and entire compensation" for the Government's allegedly unauthorized use of its patented invention. Only the question of liability is now before the court.

The patent in suit is the Campbell Patent N. 2,705,461 entitled "Cargo Net Fabricated From Flexible Cable." It discloses a cargo net that, when spread out, extends in a zigzag fashion and produces diamondshaped parallelogram meshes throughout the body of the net. Ring or hook fittings are attached along the slides and ends of the nets and at the exterior corners of the peripheral parallelograms. A net made in this manner has a high degree of flexibility and is readily adaptable to retain different shaped cargo. When not in use, the net may be collapsed by stretching it horizontally and returning the zigzag runs of cable to a parallel relationship and it may be rolled into a bundle for easy storage.

In December 1950, plaintiff entered into a contract with the Department of the Air Force for the production of six airplane cargo nets. The contract stipulated that plaintiff would grant the Government a nonexclusive, royalty-free license to any invention that was "first reduced to practice" either during the performance of the contract or "upon the understanding that a contract would be awarded." Since the invention was not reduced to practice "upon the understanding that a contract would be awarded," the Government is only entitled to a license if the reduction to practice was not completed prior to the contract.

Reduction to practice occurs when the workability of an invention can be demonstrated. Workability means that a physical form of the invention has been constructed which functions. Nash and Lasken, "Patent Rights Under Government Contracts" in Patents and Technical Data (Gov't Contracts Monograph #10) 42-52. And this requires testing the invention.

The amount of testing necessary is based upon the needs of the particular art. Sinko Tool and Mfg. Co. v. Automatic Devices Corp., 157 F. 2d 974 (2d Cir. 1946). Some devices are so simple and their purpose and efficacy so obvious that their complete construction is sufficient to demonstrate their workability. Mason v. Hepburn, 13 App. D.C. 86 (1898); Buchanan v. Lademann, 54 F. 2d 425 (C.C.P.A. 1932). Other devices required laboratory testing; others, service testing in their intended environment. E.g., Elmore v. Schmitt, 278 F. 2d 510 (C.C.P.A. 1960); Paivinen v. Sands, 339 F. 2d 217 (C.C.P.A. 1964). In all these situations, the inquiry is not what kind of test was conducted, but whether the test conducted showed that the invention would work as intended in its contemplated use. Elmore v. Schmitt, supra; Gaiser v. Linder, 253 F. 2d 433 (C.C.P.A. 1958). Proof of the invention's utility for its intended purpose does not require proof of its flawlessness; it is only necessary to show that the invention is able to perform its intended purpose beyond a probability of failure. Taylor v. Swingle, 136 F. 2d 914 (C.C.P.A. 1943).

In November, 1949, the inventor, during a conference at WrightPatterson AFB, on cargo tie-down equipment for airplanes, was informed that the Air Force, having experienced difficulty holding down miscellaneous loads inside airplanes during the Berlin airlift, was considering the use of a new type of cargo net. The nets under consideration used square mesh cable nets made from transversely intersecting cable members. They did not have the flexibility to adapt to mixed loads. Nor could they be collapsed and stored in a bundle. Soon thereafter the inventor thought of the net which is now the patent in suit. He requisitioned the necessary components and constructed a sample net. On April 16, 1950, he successfully placed the net over a load of miscellaneous items placed on a pallet. After seeing that the net adapted to the contour of the items, he removed the net, collapsed it, and placed it rolled up inside his briefcase. The following week he took the cable net to interested Air Force personnel at Wright-Patterson AFB. Application for a patent was not filed until June 19, 1951.

The cargo net patent has two primary purposes. One is to provide flexible nets that can cover and hold a large number of varied objects during transit. Campbell Specification at col. 1, ls. 15-18. The other is "to provide a net construction which may be readily folded for storage purposes" so that it 'may be conveniently stored in a rack or rolled into a compact coil." Id at col. 1, 1s. 35-40. The tests performed by the inventor on April 16, 1950, sufficiently demonstrated the workability of the net for the purposes stated in the patent specification. The invention was thus reduced to practice prior to the Government contract; therefore, the Government does not have a license to the patent.

Several months after the inventor gave the Air Force the sample nets, plaintiff was awarded a contract for six cable nets. During the performance of the contract, the inventor improved the structural pattern of the nets so that they could be more easily manufactured. Plaintiff filed a patent application for the improved structure and in January, 1952, granted an express license to the Government on the improved invention.