Morgan Gardner Electric Co. v. Buettner & Shelburne Mach. Co.
203 F. 490
7th Cir.
1913
Check Treatment
KOHESAAT, Circuit Judge

(after stating the facts as above). [1J So far as the record shows, appellee never manufactured a complete mining machine of any kind, nor had it ever manufactured or sold a complete protective device, with the exception of one sale, and that sale was procured by complainant. It nowhere in the record appears that the device so sold was intended for use in connection with an infringing machine. On the contrary, it appears that defendant never sold the sleeve or collar, except in the one instance when complainant caused it to be ordered through said Hart Williams Coal Company, and then the same were ordered as parts for “Morgan Gardner Standard D chain mining machines.” Of the elements of the protective device furnished on that occasion, it appears from the record that defendant did not have on hand the worm, but had to purchase it elsewhere, and that, when furnished, it did not fit the shaft. From defendant’s catalogue it is shown that it advertised:

“List and prices Of parts we have for the Morgan & Gardner Type Chain Coal-Mining Machines, November, 1908.”

Thus it is clear that defendant held itself out as being ready to furnish certain parts of complainant’s patent, and the question of law presented is: Did such action on defendant’s part constitute direct or contributory infringement of the patent in suit? If we have correctly stated the scope of the patent, as we think we have, then defendant .has not directly infringed the same, since it has never manufactured or sold any channeling mining machines, and, therefore, has not infringed the combination. Whether or not it has been guilty of contributory infringement depends upon a construction of that term. Contributory infringement is intentional aid or co.-operation in transactions which collectively constitute complete infringement. Walker on Patents (4th Ed.) § 407 and authorities cited; Robinson on Patents, § 905, and authorities cited.

Where a person manufactures or sells a device particularly adapted to be used in performing a patented process, and such is his intention,. he is liable for any infringement which thereafter occurs in accordance with his intention. Walker on Patents (4th Ed.) § 407. Where, however, the thing furnished is adapted to> use for other purposes than to be a part of a patented article, and the person furnishing the same does not know that it is to be thus used, he is not an infringer. Walker on Patents (4th Ed.) § 407.

As above stated, the record fails to show any evidence of intent on the part of appellee to furnish parts for any infringing machine, and it must be assumed for the purposes of this suit that it did not.

[2] Appellant contends that the supplying of the different elements of the protective device, by one or other than itself, when once broken in the operation of-its mining machines, constituted infringement. Tt *493will be borne in mind that the machines were sold without restriction of any kind; that the sleeve or collar was not supplied in any instance, excepting in the case of the protective device furnished to the Hart Williams Company on appellant’s connivance; that, so far as appears from the record, that sale was for use in appellant’s machine. It is evident that the protective device was of a perishable character. Its destruction, or that of some of its parts, was contemplated by the appellant, as well as by those to whom the latter sold its mining- machines, yet no attempt was made to limit the purchaser in respect to the source from which it should procure the repair parts.

"The mere fact that the patentee is able and willing to replace the injured parts, and make the repairs, is not alone sufficient to vest in him a monopoly of this work. If the purchaser sees lit to make necessary repairs himself,'or employs others for that purpose, he has a right to do so.” Wagner Typewriting Co. v. Webster (C. C.) 144 Fed. 405.

In a number of cases cited to section 302a, Walker on Patents (which reads in part: “A purchaser may repair a patented machine which he has purchased, by replacing broken or worn-out uupatented parts, so long as the identity of the machine is not destroyed”), the rule adhered to in Wagner Typewriting Co. Case, is followed. See, also, 30 Cyc. 985. In the present case, the appellee had the right to make repairs. It did nothing more. To, replace the hollow washer and other separate parts of the protective device did not destroy the identity of the patented device. It was clearly a repair contemplated by the appellant when it sold the mining machine. To hold otherwise, in the absence of some restricting license or other limitation, would result in the extension of appellant’s monopoly beyond the terms of the government’s grant. We are therefore of the opinion that no infringement has been shown.

In view of the foregoing, it becomes unnecessary to pass upon the other questions presented.

Affirmed.