ARO MANUFACTURING CO., INC., ET AL. v. CONVERTIBLE TOP REPLACEMENT CO., INC.
No. 21
Supreme Court of the United States
Argued October 13, 17, 1960. - Decided February 27, 1961.
365 U.S. 336
Elliott I. Pollock argued the cause and filed a brief for respondent.
Ralph S. Spritzer argued the cause for the United States, as amicus curiae, urging reversal. On the brief were Solicitor General Rankin, Assistant Attorney General Bicks, Charles H. Weston and Richard H. Stern.
MR. JUSTICE WHITTAKER delivered the opinion of the Court.
On April 17, 1956, respondent, Convertible Top Replacement Co., Inc., acquired a “Territorial Grant” (coextensive with “the Commonwealth of Massachusetts“) of all rights in Letters Patent No. 2,569,724, commonly known as the Mackie-Duluk patent, and 10 days later commenced this action against petitioners, Aro Manufacturing Co., Inc., and several of its officers, to enjoin the alleged infringement and contributory infringement of the patent and for an accounting of profits.
The patent—one for a “Convertible Folding Top with Automatic Seal at Rear Quarter“—covers the combination, in an automobile body, of a flexible top fabric, supporting structures, and a mechanism for sealing the fabric against the side of the automobile body in order to keep out the rain. Tops embodying the patent have been installed by several automobile manufacturers in various models of convertibles. The components of the patented combination, other than the fabric, normally are usable for the lifetime of the car, but the fabric has a much
After trial without a jury, the court held that the patent was valid, infringed and contributorily infringed by petitioners. It accordingly enjoined them from further manufacture, sale or use of these replacement fabrics, and appointed a master to hear evidence concerning, and to report to the court on, the matter of damages. The Court of Appeals affirmed, 270 F. 2d 200, and we granted certiorari, 362 U. S. 902.
The Court of Appeals, after holding that the patent was valid, stated that the “basic question” presented was whether petitioners’ conduct constituted “making a permissible replacement of a part [the fabric] which expectedly became worn out or defective sooner than other parts of the patented combination” or whether such replacement constituted “a forbidden reconstruction of the combination.” It then held that replacement of the fabric constituted reconstruction of the combination and thus infringed or contributorily infringed the patent. It reached that conclusion principally upon the ground that “the life of the fabric is not so short, nor is the fabric so cheap, that we can safely assume that an owner would rationally believe that in replacing it he was making only a minor repair to his top structure.” 270 F. 2d, at 202, 205.
Validity of the patent is not challenged in this Court. The principal, and we think the determinative, question presented here is whether the owner of a combination
The fabric with which we deal here is an unpatented element of respondent‘s combination patent,1 which covers only the combination of certain components, one of which is a “flexible top material.”2 The patent makes no claim to invention based on the fabric or on its shape, pattern or design. Whether the fabric or its shape might have been patentable is immaterial,3 for the fact is that neither the fabric nor its shape has been patented. No claim that the fabric or its shape, pattern or design constituted the invention was made in the application or included in the patent.
Since the patentees never claimed the fabric or its shape as their invention, and the claims made in the patent are the sole measure of the grant,4 the fabric is no more than an unpatented element of the combination which was
“The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them when dealt with separately is protected by the patent monopoly.”
And in Mercoid Corp. v. Minneapolis-Honeywell Co., 320 U. S. 680, 684, the Court said:
“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”
See also McClain v. Ortmayer, 141 U. S. 419, 423-424; Pennock v. Dialogue, 2 Pet. 1, 16.
It follows that petitioners’ manufacture and sale of the fabric is not a direct infringement under
This Court‘s decisions specifically dealing with whether the replacement of an unpatented part, in a patented combination, that has worn out, been broken or otherwise spent, is permissible “repair” or infringing “reconstruction,” have steadfastly refused to extend the patent monopoly beyond the terms of the grant. Wilson v. Simpson, 9 How. 109—doubtless the leading case in this Court that deals with the distinction—concerned a patented planing machine which included, as elements, certain cutting knives which normally wore out in a few months’ use. The purchaser was held to have the right to replace those knives without the patentee‘s consent. The Court held that, although there is no right to “rebuild” a patented combination, the entity “exists” notwithstanding the fact that destruction or impairment of one of its elements renders it inoperable; and that, accordingly, replacement of that worn-out essential part is permissible restoration of the machine to the original use for which it was bought. 9 How., at 123. The Court explained that it is “the use of the whole” of the
The distilled essence of the Wilson case was stated by Judge Learned Hand in United States v. Aluminum Co. of America, 148 F. 2d 416, 425 (C. A. 2d Cir.): “The [patent] monopolist cannot prevent those to whom he sells from . . . reconditioning articles worn by use, unless they in fact make a new article.” Instead of applying this plain and practical test, the courts below focused attention on operative facts not properly determinative of the question of permissible repair versus forbidden reconstruction. The Court of Appeals found that the fabric “is not a minor or relatively inexpensive component” of the patented combination, or an element that would expectedly wear out after a very short period of use—although its “expectable life span” is shorter than
Respondent has strenuously urged, as an additional relevant factor, the “essentialness” of the fabric element to the combination constituting the invention. It argues that the particular shape of the fabric was the advance in the art—the very “heart” of the invention—which brought the combination up to the inventive level, and, therefore, concludes that its patent should be held to grant it a monopoly on the fabric. The rule for which respondent contends is: That when an element of a patented machine or combination is relatively durable—even though not so durable as the entire patented device which the owner purchased—relatively expensive, relatively difficult to replace, and is an “essential” or “distinguishing” part of the patented combination, any replacement of that element, when it wears out or is otherwise spent, constitutes infringing “reconstruction,” and, therefore, a new license must be obtained from, and another royalty paid to, the patentee for that privilege.
We cannot agree. For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U. S., at 667; 320 U. S., at 684.10 The basic fallacy in respondent‘s position is that it requires the ascribing to one element of the patented com-
“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them when dealt with separately is protected by the patent monopoly.”
And in Mercoid Corp. v. Minneapolis-Honeywell Co., supra, at 684, the Court said:
“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”
No element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how costly or difficult replacement may be. While there is language in some lower court opinions indicating that “repair” or “reconstruction” depends on a number of factors, it is significant that each of the three cases of this Court, cited for that proposition, holds that a license to use a patented combination includes the right “to preserve its fitness for use so far as it may be affected by wear or breakage.”
The decisions of this Court require the conclusion that reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to “in fact make a new article,” United States v. Aluminum Co. of America, supra, at 425, after the entity, viewed as a whole, has become spent. In order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity, as, for example, in Cotton-Tie Co. v. Simmons, supra. Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property. Measured by this test, the replacement of the fabric involved in this case must be characterized as permissible “repair,” not “reconstruction.”
Reversed.
MR. JUSTICE BLACK, concurring.
I fully concur in the judgment of reversal and with the opinion of the Court but want to express some additional views because of the concurring opinion of my Brother BRENNAN and the dissenting opinion of my Brother HARLAN. The latter two opinions, in my judgment, attempt to introduce wholly unnecessary and undesirable confusions, intricacies and complexities into what has been essentially a very simple question under the opinions of this Court, and that is: How can a court decide whether a person who has bought and owns a patented commodity composed of a combination of unpatented
Let us first take a quick look at the top described in the patent. It is composed first and foremost of a metal frame, no part of which is, or could have been, patented. It also includes several other pieces of metal, one of them called a “wiper,” which is simply a plain piece of metal that is not and could not have been patented. Again,
The case that may well be classified as the leading one on the subject of “making” or “reconstruction” as distinguished from “repair” is Wilson v. Simpson, 9 How. 109, decided in 1850. That case involved a patent on a planing machine composed of unpatented parts described as the frame, the cogwheels, the shaft, and other elementary parts, which, when put together, constituted what was known as the “Woodworth planing-machine.” Able counsel argued for the patentee that the cutting knives, which had to be replaced from time to time, could not be replaced without thereby infringing the patent. The contention was that the machine ceased to exist or have any “material existence” the moment its knives wore out, and that for this reason replacement of the knives amounted to a “making” of the whole patented invention which infringed the patentee‘s exclusive right to “make, use, and vend.” The Court refused to accept this conceptualistic and misleading argument as to when a tangible machine ceases to have a “material existence.” It did agree that “when the material of the combination ceases to exist, in whatever way that may occur, the right to
In further explanation the Court pointed out that “[f]orm may be given to a piece of any material,—wood, metal, or glass,—so as to produce an original result, or to aid the efficiency of one already known, and that would be the subject for a patent.” It went on to say that if that patented article should happen to be broken so that its parts could not be readjusted or so worn out and beyond repair as to be wholly useless, then a purchaser could not make another to replace it without infringing, but would have to buy a new one. This because the Court said that would amount to an “entire reconstruction” of the patented article. “If, however,” and this is of crucial importance with reference to the combination patent in the present case, “this same thing is a part of an original combination, essential to its use, then the right to repair and replace recurs.” Id., at 124.
The common-sense rule of Wilson v. Simpson was followed in Heyer v. Duplicator Mfg. Co., 263 U. S. 100. Involved there was a combination patent, a multiple copying machine, “one element of which,” the Court said, “is a band of gelatine to which is transferred the print to be multiplied and which yields copies up to about a hundred. This band is attached to a spool or spindle which fits into the machine. Anyone may make and sell the gelatine composition but the ground of recovery was that the de-
None of this Court‘s cases relied upon by my Brothers HARLAN and BRENNAN justifies adoption of the supposed guides and standards referred to in their opinions. Deciding whether a patented article is “made” does not depend on whether an unpatented element of it is perishable, or how long some of the elements last, or what the patentee‘s or a purchaser‘s intentions were about them, regardless of whether the application of such standards is considered a question of law, as it is by MR. JUSTICE BRENNAN, or a question of fact, as it is by MR. JUSTICE HARLAN. The holdings of prior cases in this Court have not actually rested on such minor and insignificant factors in determining when an article has been “made” and when it has not. A case in which only a minimal component has been omitted from a “making” of the combination, such as the extreme example of omission of a single bolt from a patented machine or a button from a patented garment, might call upon this Court to articulate some rather ob-
Neither Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U. S. 325, nor Cotton-Tie Co. v. Simmons, 106 U. S. 89, nor any other cases of this Court that have treated this subject, depart from this common-sense rule of Wilson v. Simpson. In fact, as Mr. Justice Holmes pointed out in Heyer v. Duplicator Mfg. Co., supra, the question in Leeds & Catlin did not concern “a right to sub-
.stitute worn out parts” and “[t]he authority of Wilson v. Simpson and the cases that have followed it was fully recognized [in Leeds & Catlin] and must be recognized here.” 263 U. S., at 102. The Cotton-Tie case likewise contains no support for holding that replacing the fabric in this top amounts to a “making” or even a “remaking” of the whole convertible top. The patent involved there was a cotton bale tie. Marked on each, for whatever it was worth, was “Licensed to use once only.” After these ties had been used once and broken off the cotton bales, the old tie material, along with the buckles, was sold as scrap, then re-rolled, straightened, riveted together, and cut into proper lengths and attached to an old buckle. It was this making of completely new ties out of the discarded scrap material that was held to amount to a making of the patented device and therefore an infringement.9 Cf. Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 433-434. Morgan Envelope, in addition to its distinction of the Cotton-Tie case, is notable for its explicit reaffirmance of Wilson v. Simpson and for its statement by a unanimous Court that “[t]he true distinction” is whether the component part of the combination is “the subject of a separate patent.” 152 U. S., at 435. I agree with my Brother WHITTAKER that this remains the true distinction today.
I am perfectly content with the dissenting opinion‘s denomination of our interpretation as a “reconstruction” of the cases in the sense in which I understand that term to be applied in these cases. I regret to say, however, that we cannot claim this interpretation to be a “discovery” in the patent sense. It was anticipated by Judge Learned Hand‘s citation of Wilson v. Simpson for the proposition that “[t]he [patent] monopolist cannot prevent those to whom he sells from reconditioning articles worn by use, unless they in fact make a new article.” United States v. Aluminum Co. of America, 148 F. 2d 416, 425.
In my judgment it would create mischievous results for a majority of this Court to create or approve ambiguous evidentiary standards which could only obfuscate the simple fact of whether a person is “making” a patented article composed of old unpatentable elements. For example, there should be no attempt to decide whether there is a making by comparing the time that the different elements of such a patent normally will exist if let alone. The owner is under no obligation to let them alone. Every owner has the right to repair and patch each part of the property he bought and paid for in order to make it last as long as he can. Everyone knows that this patented top is likely to last as long as the car itself if it is repaired from time to time. An accident might wholly destroy the entire top and then it might have to be replaced by a new one, which if done without the patentee‘s consent would of course be an infringement. I cannot suppose, however, that if the bows upon which the fabric rests at the top, or the metal frames upon which it stands, or the metal wiper which helps to level off the curtain folds, or the snaps that may have to be used, should happen to become worn out or destroyed, that anyone could reasonably come to the conclusion that a replacement of one of these worn-out parts would be a complete rebuilding of the old top or the “making” of a new one and therefore an infringement of the patent. Such a contention would seem little short of fantastic to me, and the same is true as to replacement of the fabric.
This case is of great importance in our competitive economy. The record shows that petitioner is but one of many small business enterprises filling a useful place in manufacturing the comparatively smaller parts of larger products like automobiles. It is quite right and in keeping with our patent system that small business enterprises should no more than large enterprises be allowed to
The established policy in this Nation for more than a century has been that when an article described in a patent is sold and “passes to the hands of the purchaser, it is no longer within the limits of the monopoly. It passes outside of it, and is no longer under the protection of the act of congress. . . . Contracts in relation to it are regulated by the laws of the State, and are subject to state jurisdiction.”12 In this day of advanced technology and mechanical appliances upon which so many people depend,
A fundamental error underlying the misleading standards suggested by my Brothers HARLAN and BRENNAN is the notion that in a case of this kind a court is obliged to search for the alleged “heart” or “core” of the combination patent. This misconception, which has unequivo-
Finally, petitioners point out that there is a serious constitutional question involved in the claim that automobile owners can be mulcted for damages for replacing the worn-out fabric in their convertible tops.
“The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
MR. JUSTICE BRENNAN, concurring in the result.
I agree that the replacement of the top was “repair” and not “reconstruction,” but I cannot agree that the test suggested by my Brother WHITTAKER for determination of that question is the correct one. My Brother HARLAN‘S dissent cogently states the reasons why I also think that is too narrow a standard of what constitutes impermissible “reconstruction.” For there are circumstances in which the replacement of a single unpatented component of a patented combination short of a second creation of the patented entity may constitute “reconstruction.” Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U. S. 325; Davis Electrical Works v. Edison Electric Light Co., 60 F. 276; cf. Williams v. Hughes Tool Co., 186 F. 2d 278. These holdings applied the long-established standard for
“The other constituent parts of this invention, though liable to be worn out, are not made with reference to any use of them which will require them to be replaced. These, without having a definite duration, are contemplated by the inventor to last so long as the materials of which they are formed can hold together in use in such a combination. No replacement of them at intermediate intervals is meant or is necessary. They may be repaired as the use may require. With such intentions, they are put into the structure. So it is understood by a purchaser, and beyond the duration of them a purchaser of the machine has not a longer use.” 9 How. 125-126.
Giles S. Rich, the chief draftsman of
However, I disagree with my Brother HARLAN that we should refrain from making an independent application of the proper standard in this case because of the conclusion of both lower courts that the replacement of the top constituted “reconstruction.” I would suppose that “repair” or “reconstruction” is so far a question of law as to relieve appellate review from the restraints of
I, therefore, think that the judgment of the Court of Appeals must be reversed, except, however, as to the relief granted respondent in respect of the replacements made on Ford cars before July 21, 1955.
For more than a hundred years it has been the law that the owner of a device covered by a combination patent can, without infringing, keep the device in good working order by replacing, either himself or through any source he wishes, unpatented parts, but that he may not, without rendering himself liable for infringement, reconstruct the device itself, whether because of its deterioration or for any other reason, and even though all of the component parts of the device are themselves unpatented. Wilson v. Simpson, 9 How. 109; Cotton-Tie Co. v. Simmons, 106 U. S. 89; Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U. S. 425; Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U. S. 325; Heyer v. Duplicator Mfg. Co., 263 U. S. 100. The underlying rationale of the rule is of course that the owner‘s license to use the device carries with it an implied license to keep it fit for the use for which it was intended, but not to duplicate the invention itself. Correlatively, one who knowingly participates in an impermissible reconstruction of a patented combination is guilty of contributory infringement. “Direct” and “contributory” infringements are now codified in
I am unable to subscribe to either of these views.
I.
I believe that the narrow concept of what constitutes impermissible reconstruction, reflected in the opinion of the Court, departs from established principles—principles which, it will be shown, were approved by Congress when it enacted
The all-important thing is to determine from the past decisions of this Court what the proper test of “reconstruction” is, for I agree that
The leading case is Wilson v. Simpson, supra. There, in holding that the owner of a planing machine covered by a combination patent could replace from any source he desired the unpatented cutting knives thereof, the Court said, p. 125:
“The right of the assignee [the owner of the machine] to replace the cutter-knives is not because
they are of perishable materials, but because the inventor of the machine has so arranged them as a part of its combination, that the machine could not be continued in use without a succession of knives at short intervals. Unless they were replaced, the invention would have been but of little use to the inventor or to others. The other constituent parts of this invention, though liable to be worn out, are not made with reference to any use of them which will require them to be replaced. These, without having a definite duration, are contemplated by the inventor to last so long as the materials of which they are formed can hold together in use in such a combination. No replacement of them at intermediate intervals is meant or is necessary. They may be repaired as the use may require. With such intentions, they are put into the structure. So it is understood by a purchaser, and beyond the duration of them a purchaser of the machine has not a longer use. But if another constituent part of the combination is meant to be only temporary in the use of the whole, and to be frequently replaced, because it will not last as long as the other parts of the combination, its inventor cannot complain, if he sells the use of his machine, that the purchaser uses it in the way the inventor meant it to be used, and in the only way in which the machine can be used.”
In the Cotton-Tie case, supra, the question was whether combination patents for the making of ties for cotton bales, consisting of a metal buckle and band, were infringed by one who bought as scrap metal such ties and bands after severance from cotton bales, and resold them for further use as baling ties after piecing together several segments of the old bands and reconnecting the resulting single band with the original buckle. In holding that
“Whatever right the defendants could acquire to the use of the old buckle, they acquired no right to combine it with a substantially new band, to make a cotton-bale tie. They so combined it when they combined it with a band made of the pieces of the old band in the way described. What the defendants did in piecing together the pieces of the old band was not a repair of the band or the tie, in any proper sense. . . . The band was voluntarily severed by the consumer at the cotton-mill because the tie had performed its function of confining the bale of cotton in its transit from the plantation or the press to the mill. Its capacity for use as a tie was voluntarily destroyed. As it left the bale it could not be used again as a tie. As a tie the defendants reconstructed it, although they used the old buckle without repairing that. The case is not like putting new cutters into a planing-machine in place of those worn out by use, as in Wilson v. Simpson, 9 How. 109. The principle of that case was, that temporary parts wearing out in a machine might be replaced to preserve the machine, in accordance with the intention of the vendor, without amounting to a reconstruction of the machine.” At 93-94.
In Morgan Envelope, supra, the Court found no contributory infringement on the part of one supplying toilet paper rolls specially designed for use in a patented combination, comprising a dispenser and the paper rolls themselves. Remarking (p. 433) that there “are doubtless many cases to the effect that the manufacture and sale
On the other hand, in Leeds & Catlin, supra, the intentional supplying of phonograph records for use on respondent‘s talking machines, which were protected by a combination patent covering both machine and records, was held to be contributory infringement, it being found that records were the “operative ultimate tool of the invention,” that respondent‘s records were not inherently “perishable” in nature, and that the supplying of the competitor‘s records was not to replace records “deteriorated by use” or which had suffered “breakage.” (P. 336.)
These cases destroy the significance of two factors on which the Court heavily relies for its conclusion in the present case: first, that the fabric top was an unpatented element of the Mackie-Duluk invention, and, second, that Aro‘s tops constituted a replacement of but one part of the patented combination. For as was said in Leeds & Catlin (p. 333), “[i]t can make no difference as to the infringement or non-infringement of a combination that one of its elements or all of its elements are unpatented“; and in all of these cases the claimed infringing replacement involved only one of the elements of the patented combination. Further, the different results reached in the cases, two finding “reconstruction” and
“It is impracticable, as well as unwise, to attempt to lay down any rule on this subject, owing to the number and infinite variety of patented inventions. Each case, as it arises, must be decided in the light of all the facts and circumstances presented, and with an intelligent comprehension of the scope, nature, and purpose of the patented invention, and the fair and reasonable intention of the parties. Having clearly in mind the specification and claims of the patent, together with the condition of decay or destruction of the patented device or machine, the question whether its restoration to a sound state was legitimate repair, or a substantial reconstruction or reproduction of the patented invention, should be determined less by definitions or technical rules than by the exercise of sound common sense and an intelligent judgment.”
More particularly, none of the past cases in this Court or in the lower federal courts remotely suggests that “reconstruction” can be found only in a situation where the patented combination has been rebuilt de novo from the ground up.4
The reference which the Court makes to the Mercoid cases, 320 U. S. 661, 320 U. S. 680, is, in my opinion, entirely inapposite, since those cases, as the Court recognizes, p. 344, n. 10, supra, dealt with the issue of patent misuse, an issue which specifically is not before the Court
I think it significant that in stating (p. 668) that the doctrine of the Leeds & Catlin case “must no longer prevail against the defense that a combination patent is being used to protect an unpatented part from competition,” the Court went on to say, at 668-669:
“That result obtains here though we assume for the purposes of this case that Mercoid was a contributory infringer and that respondents could have enjoined the infringement had they not misused the patent for the purpose of monopolizing unpatented material. Inasmuch as their misuse of the patent would have precluded them from enjoining a direct infringement [citing the Morton Salt case] they cannot stand in any better position with respect to a contributory infringer. Where there is a collision between the principle of the Carbice case and the conventional rules governing either direct or contributory infringement, the former prevails.” (Italics supplied.)
As for my Brother BLACK‘S opinion, the congressional action of 1952, reaffirming what I consider must be taken as the doctrine of the Wilson line of cases, also requires rejection of what he now conceives to be a more enlightened policy in this field of law.7
II.
My Brother BRENNAN‘s opinion for reversal rests, as I understand it, not upon the view that the two courts below applied wrong legal standards in reaching their conclusion, but that “‘repair’ or ‘reconstruction’ is so far a question of law as to relieve appellate review from the restraints of
We do not sit in judgment on the decisions of the lower federal courts because we are endowed with some special measure of discernment, but because it is imperative that on matters of general concern, that is on matters of principle, there should be one authoritative and unifying expositor of federal law. I need not join issue on whether Rule 52 (a) serves to constrict appellate review in cases like this, cf. Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U. S. 271, 275, 279, for the rule which I believe should limit us is based on the purposes which this Court can and should fulfill.
In this case there is no question but that the two courts below adverted to all the relevant standards but, having done so, they concluded that on the facts before them there was contributory infringement. I cannot see what else my Brother BRENNAN is doing but reaching a different conclusion of his own. I cannot understand how such a conclusion, even were it accepted by a majority of the
Because the question of “repair” or “reconstruction” must be a mixed question of law and fact, it does not follow that we should review other than gross misapplications (certainly not present here), when the legal ingredient of this mixture is concededly correct. In the analogous area of determining the issue of patentable novelty, Courts of Appeal have consistently deferred to the judgment of the District Court (see the excellent statement of Judge Fahy in Standard Oil Development Co. v. Marzall, 86 U. S. App. D. C. 210, 181 F. 2d 280, 283-284), and where they have departed from this judgment the reason has generally been because the District Court had failed to reach its conclusions by reference to correct standards. See Kwikset Locks, Inc., v. Hillgren, 210 F. 2d 483; cf. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 153, 154. Whether this practice be considered as compelled by the dictates of good sense or by
I would affirm.
Notes
“(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.
“(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
“(c) Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer.”
The Mackie-Duluk invention was described by the Court of Appeals as follows:
“Folding tops for vehicles consisting of bows of wood or metal covered with a flexible waterproof fabric . . . are, of course, as old as the automobile art which in the beginning only adopted with necessary modifications the much older art of collapsible tops for chaises, buggies and some other horse drawn vehicles. The rear panels of the folding tops of earlier days were fastened permanently at the bottom to the outside of the top of the rear portion of the body of the vehicle, and the quarters, the rear portions of the sides of the vehicle, if protected at all, were protected with flaps or curtains, sometimes integral with the top and sometimes not, fastened at the bottom to the outside of the top of the body with buttons, snaps or some equivalent means of fastening. Naturally, to prevent tearing, these quarter flaps had to be unfastened by hand when the top was lowered and when the top was put up fastened again by hand for neat appearance and also to prevent the entrance of rain. This manual fastening and unfastening of the bottoms of the quarter
“The Mackie-Duluk device consisted of providing an elongated flap integral with the quarter sections of the fabric top adapted to be permanently fastened at the bottom deep within the body of the car, at or perhaps below, but certainly not in front, of the axis of rotation of the bows, to a trough welded to the body of the car and provided with a drain to carry off water entering between the flap and the car body. In addition, to minimize the entrance of water between the body and the flap, they provided a ‘wiper arm’ so-called, which in effect acted as an additional, low rearward bow pressing the downwardly extending flap outwardly against the top of the body of the vehicle as the top is raised from its folded position to close, or substantially to close, any gap there might be between the inside of the top of the body of the car and the flap extending downward into the interior of the automobile body.” 270 F. 2d, at 202-203.
The District Court said:
“Mackie-Duluk was a substantial and enlightened step, filling a long-felt want, in a field in which defendants have produced, with one exception, only paper patents, the most emphasized being foreign, which did not even purport to do what Mackie-Duluk accomplished.” Id., at 201.
“(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
“(c) Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”
The hearings and committee reports show that the only purpose of these provisions was to prevent this Court‘s decision in Mercoid Corp. v. Mid-Continent Inv. Co., 320 U. S. 661, from being treated as having obliterated the law of contributory infringement:
“Mr. ROGERS. Then I take it from your statements, that there is some difference of opinion among those engaged in the practice of patent law as to whether or not the Supreme Court in its decisions has done away with contributory infringement.
“Mr. RICH. There is a great difference of opinion on the part of the bar and also apparently on the part of the judiciary . . . .
“Mr. ROGERS. Then in effect this recodification, particularly as to section 231 [from which came the present § 271], would point out to the court, at least that it was the sense of Congress that we remove this question of confusion as to whether contributory infringement existed at all, and state in positive law that there is such a thing as contributory infringement, or at least it be the sense of Congress by the enactment of this law that if you have in the Mercoid case done away with contributory infringement, then we reinstate it as a matter of substantive law of the United States and that you shall hereafter in a proper case recognize or hold liable one who has contributed to the infringement of a patent.
“That is the substantive law that we would write if we adopted this section 231 as it now exists. Is that not about right?
“Mr. RICH. That is a very excellent statement. . . .” Hearings, supra, note 1, at 159.
[Footnote 3 continued on p. 349.]
“. . . Considerable doubt and confusion as to the scope of contributory infringement has resulted from a number of decisions of the courts in recent years. The purpose of this section is to codify in statutory form principles of contributory infringement and at the same time eliminate this doubt and confusion.” H. R. Rep. No. 1923 on H. R. 7794, 82d Cong., 2d Sess. 9. Leeds & Catlin Co. v. Victor Talking Machine Co., supra; Davis Electrical Works v. Edison Electric Light Co., supra, “in certain stages of use the essence of a device, though in appearance only a small portion of it, may be lost, and its renewal amount to reconstruction.” Pp. 279-280. Morrin v. Robert White Engineering Works, supra, p. 519. While, as the Court remarks (ante, p. 343, n. 9), the Court there did refer to the fact that the original ties were stamped “Licensed to use once only,” it is manifest that nothing really turned on that point.“(d) No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement.”
This provision was designed specifically to prevent the Mercoid case from being interpreted to mean that any effort to enforce a patent against a contributory infringer in itself constitutes a forfeiture of patent rights:
“Mr. RICH. . . .
“Other decisions following Mercoid have made it quite clear that at least some courts are going to say that any effort whatever to enforce a patent against a contributory infringer is in itself misuse. The cases are cited in the old hearings. Therefore, we have always felt—we who study this subject particularly—that to put any measure of contributory infringement into law you must, to that extent and to that extent only, specifically make exceptions to the misuse doctrine, and that is the purpose of paragraph (d).” Hearings, supra, note 1, at 161-162.
“. . . The last paragraph of this section provides that one who merely does what he is authorized to do by statute is not guilty of misuse of the patent.” H. R. Rep. No. 1923, supra, note 3, at 9.
Heyer v. Duplicator Mfg. Co., supra; American Safety Razor Corp. v. Frings Bros. Co., 62 F. 2d 416; El Dorado Foundry, Machine & Supply Co. v. Fluid Packed Pump Co., supra; Slocomb & Co., Inc., v. Layman Machine Co., supra. Compare note 7, infra.“(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.”
Although there was no statutory provision defining infringement prior to 1952, the definition adopted is consonant with the longstanding statutory prescription of the terms of the patent grant, which was contained in § 4884 of the Revised Statutes as follows:
“Every patent shall contain a short title or description of the invention or discovery, correctly indicating its nature and design, and a grant to the patentee . . . of the exclusive right to make, use, and vend the invention or discovery throughout the United States . . . .” (Emphasis supplied.)
This provision is now contained without substantial change in
This policy was before the Committee in the form of an objection to the proposed codification of the Wilson line of cases and its doctrine in the 1952 Act. Despite the objection Congress passed
“Mr. CRUMPACKER: We have received protests from manufacturers of replacement parts for such things as automobiles, farm tractors, and the like, who evidently feel that the language used in this H. R. 3760 would make them contributory infringers of patents on the original article, the tractor or something of that sort.
“Mr. RICH [who was the principal spokesman for the group which drafted the present statute]: Those were the most vociferous objec-
tors to the old bills on the subject. Whether or not they would be liable would depend on the facts in each particular case. . . .” Hearings before Subcommittee of House Judiciary Committee on H. R. 3760, 82d Cong., 1st Sess., at p. 153 (1951).