## Facts

- Anthony J. Cali, a Pan American World Airways mechanic, devised a modification to reduce abrasive wear in the JT-4 jet engine compressor by rigidly connecting parts of the compressor assembly (including a welding approach); a tie-rod alternative was also developed.
- Cali submitted the idea to Pan Am in December 1962 through an employee suggestion program.
- Cali filed his patent application on September 1, 1964, making September 1, 1963 the § 102(b) critical date for a one-year “public use” bar.
- Before the critical date, Pratt & Whitney and Pan Am authorized and carried out limited “trial” or “token” installations of both the tie-rod and welding approaches.
- Engines incorporating the modifications were installed on Pan Am aircraft and flown in normal commercial service before September 1, 1963.
- Pan Am issued staged amendments to its overhaul manuals describing the modifications (April 4, 1963 for tie-rod; August 27, 1963 for both methods) and discussed the welding operation with another airline in mid-1963.
- Pan Am later compensated Cali under its suggestion plan and encouraged patenting while retaining certain rights.
- Cali sued Eastern Air Lines for infringement after Eastern adopted the welding approach; Eastern sought summary judgment that Cali’s patent was invalid due to pre-critical-date “public use.”
- The district court granted summary judgment for Eastern, finding the invention was in public use more than one year before filing and not used primarily for experimentation.
- On appeal, the dispute centered on whether Pan Am’s pre-critical-date uses were primarily experimental or ordinary commercial uses.

## Issues

1. Whether summary judgment was proper where the record allowed competing inferences about whether pre-critical-date uses were “public use” under 35 U.S.C. § 102(b) or were primarily experimental and therefore exempt.
2. Whether use during ordinary commercial operations necessarily defeats the experimental-use exception as a matter of law.

## Decision

- The Second Circuit reversed the grant of summary judgment and remanded.
- The court held a genuine issue of material fact existed as to whether Pan Am’s use before September 1, 1963 was primarily experimental.
- The court rejected the view that operation on revenue flights, by itself, conclusively established a § 102(b) public use.
- The court concluded the record could support either inference—experimental trial use or commercial exploitation—requiring factfinding rather than summary disposition.

## Legal Principles

- Under 35 U.S.C. § 102(b), a patent is barred if the invention was in “public use” more than one year before the application filing date.
- The experimental-use exception can preserve patentability when the pre-critical-date use is undertaken primarily to test, evaluate, refine, or decide whether to adopt the invention, rather than to exploit it commercially.
- Whether a use is “primarily experimental” depends on the purpose of the use; experimentation may include determining whether an invention should be adopted at all, not only perfecting a final design.
- Summary judgment is improper where material facts depend on disputed or competing inferences about intent, motive, and the purposes of use.

## Conclusion

The Second Circuit held that the character of Pan Am’s pre-critical-date installations and operations raised triable questions about experimental purpose under § 102(b), making summary judgment on invalidity improper and requiring further proceedings.


Cali v. E. Air Lines, Inc., 442 F.2d 65 (2d Cir. 1971)