*1 LAITRAM CO., INC. PACKING DEEPSOUTH CORP. May 30, 1972 April 1972 Decided Argued No. 71-315. Douglas, White, J., opinion Court, in delivered the of the which J., Brennan, Stewart, Marshall, JJ., joined. Blackmun, Burger, J., dissenting opinion, in and Powell filed a C. post, Rehnquist, JJ., joined, p. 532. With argued petitioner.
Harold J. Birch the cause for Pugh him on the Emmett William W. briefs were C. Beckett.
Guy Shoup W. the cause and filed a brief for argued respondent. Mary
Edward S. Irons and Helen a brief Sears filed as amici urging curiae reversal. opinion delivered the
Mr. Justice White Court. United District Court for States the Eastern Dis-
trict of Louisiana has written:
“Shrimp, whether boiled, barbecued or broiled, fried, are a gustatory they did not delight, but evolve they satisfy palate. crustaceans, man’s Like other wear their in order skeletons outside their bodies savory their pink against shield flesh white *2 They their predators, including carry also man. commonly intestines, called in sand veins, bags (or run For bags) length the of their bodies. shrimp to edible, necessary be their remove shells. In if addition, shrimp the is removed, vein become pleasing to the more fastidious as well 1 palatable.” more Such “gustatory” rare those observations аre even in piscatorially federal blissfully favored situated on courts the Coast, they properly Nation’s Gulf but recited in this case. Petitioner hold respondent both patents on shrimp cheaply machines that devein more efficiently than labor competing or hand machinery can job. do the Extensive litigation below has estab- lished that respondent, Laitram has Corp., superior claim and use of the distribution and petitioner Deepsouth’s machinery country in this should enjoined prevent patents. of Laitrаm’s Laitram Corp. Deepsouth Packing Co., v. 2d F. (CA5 1971). granted We 404 U. S. certiorari, Deep- 1037 (1972), question: to consider a related Is by barred from the "south, American market Laitram’s patents, by ex- foreclosed laws from fully in porting deveiners, form, less than assembled use abroad? Aor
I rudimentary A dis- understanding patents in pute a prerequisite to comprehending the issue legal presented. The District Court determined Corp. Laitram held two valid for machin- Corp. Deepsouth Packing Co., Supp. shrimp. One, deveining process used ery over а “slitter” rights accorded Laitram granted 1954,2 pres- water shrimp by using the veins exposed down inclined shrimp to force the gravity sure and shrimp de- As the with razor blades. trough studded are slit trough scend backs through their objects arranged zig-zag blades other knife-like pattern. 1958, covers patent, granted The second mechanically “a remove substan- “tumbler,” device tially shrimp all whose have previously veins backs been the machines described in the slit,” App. 127, patent. invention of water to This uses streams carry shrimp revolving slit into and then out of drum metal. shrimp fabricated from commercial As sheet pass “lips” drum the through punched hooked *3 metal, “projecting at an acute from the angle support- ing member a having and smooth rounded free edge for engaging shrimp beneath the vein and for wedg- ing vein between lip and supporting mem- ber,” App. 131, engage the and remove veins them.
Both the and slitter the tumbler are combination patents; is, parts of the are
“[n]one referred to and new, none are claimed as nor new; any portion of the com- bination less than the whole claimed as new, stated produce any given result. The end in view is proposed by accomplished to be the union of all, and arranged together combined in the man- ner described. And this combination, composed of all parts mentioned in the specification, and arranged with reference to each other, and to other patent expired shortly This argument before in this court and is therefore not relevant to injunctive Laitram’s claim for relief. It describеd, however, because Laitram damages claims £>eep- past exportation south’s asserted parts of the of this machine. in the manner therein de- the [machine] is the and scribed, improvement, is stated Prouty Ruggles, thing patented.” Pet. recited in Laitram’s The slitter’s elements as (actually, claim a “knife” trough, were: an inclined knives) (water in a means positioned trough, sprayed jets) shrimp trough. from down the move the mem- “support “lip,” The tumbler’s include elements (water jets). and a “means” As is ber,” thrust in in patents, usual combination none of elements at patents patentable either these were themselves they the time now. The means patent, nor inventions, water, is, course, both moving was commonplace. (It is not suggested by infringed patents jets.) Laitram’s of water its use cutting instruments troughs inclined used slitters were and are for general commodities available use. The lip structure of the support member hardly the tumbler were novel: concedes that merely the inventors adapted punched metal or- sheets dered from catаlog perfect a commercial their order invention. The were warranted not novelty of their novelty elements but represented. Invention they recog- was nized because assignors3 ordinary Laitram’s combined *4 extraordinary way elements in an novel union of —a old means was designed to achieve new ends.4 Thus, by developed The machines were two brothers who are now president vice-president Corp. patents of the Laitram The names, assigned in their corporation. but have been to the 4 The District Court wrote: overbroad, and indefinite. anticipated by “Defendant urges prior art, that the obvious, While [1958] it is clear described patent is invalid as in functional the elements aggregative, language, exceed way “the whole some [ed] for inventions both Super- Co. P. Tea Great A. & parts.” of its the sum Corp., Equipment 147, 340 U. S. market II valid Laitram held decision The lower court’s to the corporation entitled the combination keystone 154, § C. bestowed U. S. privileges of seven- the term provision patent code. “[F]or had patent, date years” teen from the or using, making, sell- “the exclude others . .” . . throughout the United States ing the invention provides affording right in turn § basis induced, and patentee injunction against direct, an contributory or § 35 U. S. an infringement, C. already infringement such has damages award of when Infringement is defined occurred, § C. 284. U. S. terms follow § 35 U. S. C. those § 154:
“(a) Except provided this title, otherwise any or sells authority makes, whoever without uses patented within the United dur- invention, States in- [directly] the term of the ing therefor, fringes patent. actively induces
“(b) Whoever of a be liable as infringer. shall sells “(c) component patented Whoever of a machine, manufacture, composition, apparatus or a material or for use in practicing patented process, constituting part a material knowing especially the same to be invention, made or especially adapted for in an use infringe- punch patent, especially lip . . material, . had been avail- period time, they for a considerable when combined able co-act in perform produce a new such a manner function new results.” Supp., 301 F. at 1063. *5 or staple article of and not a patent,
ment such non- commodity suitable for substantial of commerce contributory a use, shall liable as infringing infringer.” judgment a these provisions
As result and Deepsouth superiority Laitram’s forecloses any from use than a use (other its customers future Laitram approved by Laitram or after occurring patent has expired) “throughout its deveiners provisions taken con- United States.” The junction with the below entitle Laitram judgment injunction Deepsouth tо the it has prohibiting received or, made, from continuing “make” once “sell” “throughout deveiners Further, United States.” may past recover unauthorized damages any or use, sale, making “throughout United States.” much disputed. This is not every
But argues that it is not liable for type past portion its sale that a future busi- is salvageable. provisions ness Section and related obviously patentee monopoly are intended to a a grant only over they are in- the United States market; a patentee tended to grant the bonus of favored posi- tion a flagship company free of competition American in international itself commerce. barred from Deepsouth, its using deveining from others machines, inducing them “throughout States,” use United barred also making selling the machines United States, seeks to make parts of deveining machines, to sell them to foreign buyers buyers, to have the assemble use machines abroad.5 Ac- 5Deepsouth entirely straightforward indicating course of conduct is motivated patent infringe- desire to avoid president ment. Its wrote a Brazilian customer: handicapped against “We are a decision us in the United States. very This was technical decision and we can manufacture the entire *6 expressed approval, judicial Deepsouth seeks cordingly, injunc- of the interpretation a modification through shipping of practice continuing tion its against it, sepa- in three customers deveining equipment foreign only parts rate boxes, containing each 1%-ton than one yet less machines, whole assemblable means both company hour.6 contends that this The machines occur abroad and the “use” of the “making” making monopoly Laitram’s lawful over the use of the machines the United States throughout infringed. not
Laitram is based counters this course of conduct upon hypertechnical that, code reading if tolerated, deprive right will it of its to the fruits of the inventive of its “The genius assignors. can plainer by ,” be made definition . . make . scarcely O’Donnell, Bauer Deepsouth v. 229 U. 101,S. in all respects assembly parts save final “makеs” the invention. It does so with intent of having the foreign user combination effect the without Laitram’s permission. Deepsouth components sells these though as they were assembly the machines themselves; the act of indeed regarded, advertised, importance. as of no
The District Court, faced with dispute, noted prior three circuit courts had considered the mean- ing of “making” this context and that all three had resolved question favorably Deepsouth’s posi- any complication machine without States, in thе United with the exception that there are two that must not be assembled in the States, United but assembled after the machine arrives Brazil.” Quoted Corp. Deepsouth Packing Co., v. 2d 443 F. (CA5 1971). 938 shipped, Deepsouth’s As tumbler deveining contains a belt dif- ferent support lip. Laitram’s member and But the Laitram elements separate are included in a box and the tumbler is made to accommodate the Laitram elements. The record shows many customers will use the parts. machine with the Laitram Hewitt-Robins, Inc. Link-Belt tion. See v. Cold Metal Cо. v. United (CA7 2d Process 1966);
F. Engineering Foundry Co., (CA3 1956); & F. 2d Andrea, Corp. and Radio America 2d 626 (CA2 1935). injunc- Court District held that tion should be read prohibiting export elements even those when predictably elements could and be would combined form the whole.
“It may urged log- . . result is not that. [this] ical .... But it is twin founded on notions that *7 underlie the patent One is that a combina- laws. only tion patent protects the combination. other monopolies is that those conferred —even not viewed with favor. These are logic —are F. enough.” Supp. 310 929 926, The Court Appeals reversed, for the Fifth Circuit departing Second, thus from the established rules of the Third, and Seventh In Fifth Circuits. Circuit panel’s those opinion, previously courts that considered question “worked conceptual themselves into ... box” “an adopting artificial, technical construction” patent of the laws, moreover, which construction, opinion of the the Constitutional panel, “[subverted] scheme of promoting Progress 'the of Science and use- ” by ful Arts’ allowing an a patentee’s intrusion on rights, at 2d, 938-939, citing I, U. S. Art. 8.§ Const.,
Ill We disagree with Court of Aрpeals the Fifth Circuit.7 Under the common no law the inventor had simplicity’s sake, we, courts, only Eor the lower like will discuss Deepsouth’s permissible obvious, claim as to future conduct. It is however, say scope injunction that what we as to in Lai- applies tram’s favor to the damages calculation of that Laitram may recover. using inven- making from his others exclude
right Deepsouth’s suppress ex- If has a tion. Laitram patent grant, derived from its it must be port trade C.S. We find that 35 U. patent statute.8 thus laws on 271, provision § its claim. supрort does not relies, intended conduct were Certainly if Deepsouth’s United inside the patented deveiners lead to use subject activity would be production sales States infringe- injunction contributory induced or no con- there can be it is ment. But established intention of a tributory the fact infringement without “In a if is no word, there infringement. direct [direct] contributory can no of a there be Co., Corp. Mercoid Mid-Continent infringer.” v. on 661, (1944) (Frankfurter, dissenting other J., U. S. Top Mfg. Replacement Aro Co. Convertible grounds). succinctly articulates (1961), 341-342 U. S. the law: (c)- part
“It the Patent plain § —a Code in 1952—made no change enacted precept fundamental that there can contribu- no *8 tory infringe- infringement absence of direct the contributory That infringe- ment. section defines infringement -namely terms of ment direct the — component patented sale of a combination or of for 'in machine use an of such infringement ” patent.’ 8 right patentee property “But the of which a has in his inven tion, right use, and his altogether exclusive derived statutory provisions; these аlways this court held that [has] property invention, an inventor has no of upon his suit, he can maintain a it, unless he obtains a for according Congress; the acts rights of and that his regulated are to be by laws, these go beyond measured and cannot them.” Brown v. Duchesne, 183, (1857). How. infringe-
The statute makes it clear 'that it is not the patented product ment to make outside of or use Dowagiac § United States. U. 271. See S. C. Mfg. Co. v. S. Minnesota Moline Plow 235 U. Duchesne, 19 (1915), Brown v. 641, How. seeks, injunction in order the it to secure Thus, (a) Laitram must §a direct show Dеepsouth in that States, Deepsouth the United that is, “makes,” patented product “uses,” “sells” the within country. the bounds of this the Deepsouth does that “uses” suggest ma- argument Deepsouth
machines. sells the Its primarily Deepsouth’s chines —based on sales rhetoric carry day and related indicia price9 such as —cannot it unless can be shown that is selling “patented question invention.” The sales resolves thus into question itself of did Deepsouth manufacture: (and “make” under sell) something cognizable then law as the patented or did it invention, (and “make” then of sell) something that fell short infringement?
The Court that the word “makes” Appeals, believing should be “a accorded keeping construction with ordinary meaning term,” 2d, 443 F. at held against Deepsouth theory on the “makes” “means ordinarily what connotes —the substantial manufac- ture of the constituent Id., at machine.” 939. Passing question of whether definition closely corresponds more ordinary meaning term than that offered Judge years Swan in Andrea 35 (something earlier when it made reaches the state 9Dеepsouth completely sold the less than assembled machine price fully same as it had sold assembled machines. Its adver tisements, correspondence, frequently and invoices referred to a “machine,” rather than parts. to a kit or unassembled See Brief for *9 Respondent 8-11. we find the Fifth Circuit’s defi- “operable” assembly), final head unacceptable nition because collides on with line it firmly patent of decisions embedded in our law as to be so congressional recasting absent unassailablе statute.
We cannot endorse the view “substantial manufacture machine” of the constituent [a] constitutes direct when we have so often patent only held that a protects against operable assembly of the whole and not the manufacture parts. pointed we “For as out Mercoid v. Mid- Co., Continent Investment U. S. [320 676] patent on a on combination is a the assembled whole, separate not on functioning parts.” Mercoid Corp. Regulator Co., v. well Minneapolis-Honey (1944). U. S. 680, 684 See Leeds & Catlin Co. v. Victor Talking Machine 213 U. 301: S.
“A combination is a union of elements, may be partly wholly old and partly new, or old or wholly new. But whether old, new or the combina- tion ais means —an invention —distinct from them.” Id., at 318. element is not the
“[0]ne combination. all Indeed, of the elements not. be that —to be identical To. with the invention of the they must combination — Id., united same operative law.” at 320. And see Brown Guild, Wall. 181 In sum, anything is
“[i]f settled in the law, is that the combination patent only covers totality of the elements in the claim that no ele- separately ment, viewed, grant.” within Aro Mfg. Co. v. Convertible Top Replacement Co., 365 S.,U. at 344.
It was this basic the patent system tenet of that led Judge Swan hold the leading case, Radio Corp. of Andrea, America v. 2d (1935), that unassembled export of the elements of invention did not an infringe patent. the relationship the patent. is essence of the
“[The] . . No wrong patentee is done the until com- bination is monopoly formed. His not cover does the manufacture or of separate capable sale elements being, but never to form associated аctually, Only the invention. when such association is made is there a direct his monopoly, and if it territory even then done is outside monopoly granted.” Id., was at 628. Engineering See Cold Metal Co. Process v. United Co., & Foundry 2d, (“We 235 F. at 230 in full accord with the rule laid down thus in the Andrea case and we think the master and court the district Hewitt-Robins, applying here”); were Inc. Link (to effect). Belt 371 F. 2d, at same We reaffirm today. this conclusion
IV It from too conclusion is derived said this interpretation statute, narrow and technical and that this Court should foсus the constitutional on mandate and promote Progress of Science useful
“[t]o for limited to Authors and Arts, securing Times respective Right Inventors their the exclusive Writings 8,§ . . . Art. ,” I, Discoveries manner al- would, construe the statute in a legedly, better Framers. policy reflect the The direction accept argument.
We cannot pro power Congress have I shall Art. is that When, useful arts. of science progress mote the how sign permissive, the Constitution here, only can come go chosen to Congress has far provisiоns of construing We are here Congress. law in this prevailing passed 1952. statute *11 necessary patent is to show a courts what other as to a of old combination elements able invention when the cases when clearly was evident from the claimed Andrea, representing and at time passed; Act was of law of with specific application a respect export patent, to the of a combination elements years 271, Congress § 17 old. When drafted was no to either change it indication that it desirеd gave law of as or the relevant here any ruling of Andrea.10 Nor it on more recent has patent privilege occasion indicated that wanted run than it farther was understood to run 35 for prior the action Appeals of the Court years Fifth Circuit. Moreover, petitioner’s we must consider in light claim antipathy historical to monopoly11 Nation’s repeated congressional preserve efforts and foster competition. As this Court recently said without dissent: rewarding useful invention, 'rights
"[I]n community must fairly welfare dealt 10 1952, Whеn 271 was drafted and submitted to the Senate § change Senator Saltonstall asked: “Does any way the bill the law in only codify present patent McCarran, or laws?” Senator Chair Judiciary Committee, man of the responded: present “It codifies the patent laws.” Cong. Rec. 9323. 11See the discussion in Graham Co., 1, v. John Deere 383 U. S. seq. (1966). et effectually Winsor, Kendall v. guarded.'
with and 322, (1859). pre- To end How. strictly patent ob- requisites obtaining limi- patent and when the has issued the served, strictly on its are equally tations exercise en- Sears, forced.” Roebuck Co.& Stiffel U. S.
It expand follows that we rights should not overruling modifying prior our construing cases unless statutes, argument for expansion of privilege is based on more than mere inference from statutory ambiguous We language. require would clear and certain signal Congress approving before the position of litigant respondent who, argues here, the beachhead of privilege wider, the area of public narrower, previously use than had courts thought. No such signal legitimizes respondent’s posi- tion in this litigаtion.
In we note that what here conclusion, is at stake is the companies compete American with patent American holder in patent markets. foreign Our system makes no claim to extraterritorial effect; “these acts of Congress do and not, oper- were not intended to, beyond ate the limits of Brown States,” the United Duchesne, 19 How., 195; at and we correspondingly reject the claims of others such control our over v. Graff, markets. Cf. Boesch S. U.
(1890). To degree the pro- inventor needs tection mаrkets other than those of this country, the wording 35 U. S. C. 154 and 271 a congres- §§ reveals sional intent have him seek it through patents abroad secured countries where his goods being are used. Re- spondent foreign patents; adequately holds does not explain does not avail itself of them. why it
y case this statutory law resolves In the case sum: have courts many so When respondent. against evident —a appears so held what so often by combination —we infringed only patent can be And anew. begin mold break the prepared insist still we would resolved, so matter not were the to extend intent congressional indication on clear mo- recognize before we could patent privilege lacking. is indication nopoly here Such an claimed. Appeals for of the Court of judgment Accordingly, the and the case is remanded the Fifth Circuit is reversed opinion. proceedings consistent with so
It is ordered. Blackmun, The with whom Chief Jus- Justice Mr. Rehnquist Powell, Mr. Justice tice, Mr. Justice join, dissenting. grant limited,
Because our of certiorari was U. S. (1972), customаrily presented issues validity and in this are not before us case. necessarily I accept, therefore, conclusion that Laitram are valid and de- veining when manufactured and assembled in machine, an infringement. United Court so States, concedes. The Court, however, denies law protection against Deepsouth’s manufacture assembly when the mere assembly effected abroad. It theory so on the there then is no does “making” patented invention in the United States even *13 every part though Deepsоuth made here and ships all response order from abroad.
With all to me respect, seems to be too narrow of 35 reading U. C. (a). §§ S. In addi- unduly the result tion, to reward the artful com- petitor who uses entirety another’s invention profit who thereby. may seeks to Deepsouth admis- sive and or, ante, candid as the Court it, describes at 523 n. 5, “straightforward,” rhetoric,” ante, its “sales at but 527, very me that rhetoric reveals iniquitous and Deepsouth’s opera- evasive nature I do tions. how escape see one can the conclusion Deepsouth machine was made in the United within States, meaning protective language §§ (a). The would situation, perhaps, be different were only even parts, part, vital one manufactured abroad. Here everything accom- was plished country in this except pieces to- putting gether (an as directed operation that, as represented to its Brazilian prospect, take “less would than one all hour”), much as fond father does with his little daughter’s doll house on Eve. Christmas To say that such аssembly, accomplished abroad, is not prohibited combination and that re- avoids the strictions of our law, is bit too much for me. The Court opened way deny has the holder the United States combination the benefits of his invention with respect sales foreign purchasers.
I also suspect the substantially Court overstates when it describes Corp. Andrea, Radio America v. 79 F. (CA2 2d 626 1935), ante, case,” a “leading at imputes and when it to Congress, in drafting the 1952 statute, an ante, of Andrea’s law,” awareness “prevailing at Andrea seriously 530. wаs only undermined years two after its promulgation, when the Court of Appeals modi- fied its decree on a second review. Radio Corp. of Andrea, America v. 2d (CA2 1937). Its author, Judge Swan himself, dissenting part the 1937 decision, somewhat ruefully allowed that his court overruling Id., was the earlier decision. at I 615. therefore would follow the Fifth opinion Circuit’s in the *14 reject and would (1971), F. 2d 936
present case, opinion Andrea and weakened in the older reasoning merely opinions Circuit Third and Seventh in the and it. follow construction, only most rigid
By process Clark, Judge what fulfills tоday, decision Court, Circuit, distressingly for the Fifth opinion in his able forecast: today] the Court does
“To otherwise hold [as pro- scheme the Constitutional would subvert Arts, and useful Progress ‘the of Science moting In- to Authors and for limited Times securing respective to their Right ventors exclusive art. I Const., U. S. Writings Discoveries.’ infringer up It would to set § 8 Cl. 8. allow an shop patent-protected inventor whose next door market and product enjoys foreign a substantial If deprive him of this valuable business. fully protection effectuated, Constitutional is to be manufactures infringer must extend to an who captures foreign the United States and then The patentee. markets Constitutional cannot just mandate be limited to manufacturing within selling the United States. in- fringer reap would then be allowed the fruits of the American labor, ma- economy technology, — terials, subject etc.—but would not be to the re- sponsibilities of the American laws. We cannot permit infringer enjoy these benefits strip away portion then be allowed patentee’s protection.” 2d, at 939. I share the Fifth Circuit’s concern I therefore dissent.