Aro Manufacturing Co. v. Convertible Top Replacement Co.

365 U.S. 336, 81 S. Ct. 599, 5 L. Ed. 2d 592, 1961 U.S. LEXIS 1944

Opinions

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 shorter life. It usually so suffers from wear and tear, or so deteriorates in appearance, as to become “spent,” and normally is replaced, after about three years of use. The consequent demand for replacement fabrics has given rise to a substantial industry, in which petitioner, Aro Manufacturing Co., is a national leader. It manufactures and sells replacement fabrics designed to fit the models of convertibles equipped with tops embodying the combination covered by the patent in suit.

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 expect-edly 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 patent, comprised entirely of unpatented elements, has a patent monopoly on the manufacture, sale or use of the several unpatented components of the patented combination. More specifically, and limited to the particular case here, does the car owner infringe (and the supplier contributorily.infringe) the combination patent when he replaces the spent fabric without the patentee’s consent?

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 claimed as the invention, and the patent did not confer a monopoly over the fabric or its shape. In Mercoid Corp. v. Mid-Continent Co., 320 U. S. 661, 667, this Court ruled the point as follows:

“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 35 U. S. C. § 271 (a).⁵ Cimiotti Unhairing Co. v. American Fur Co., 198 U. S. 399, 410; Eames v. Godfrey, 1 Wall. 78, 79; Prouty v. Ruggles, 16 Pet. 336, 341; U. S. Industries, Inc., v. Otis Engineering Co., 254 F. 2d 198, 203 (C. A. 5th Cir.). But the question remains whether petitioners’ manufacture and sale of the fabric constitute a contributory infringement of the patent under 35 U. S. C. (c).⁶ It is admitted that petitioners know that the purchasers intend to use the fabric for replacement purposes on automobile convertible tops which are covered by the claims of respondent’s combination patent, and such manufacture and sale with that knowledge might well constitute contributory infringement under § 271 (c), if, but only if, such a replacement by the purchaser himself would in itself constitute a direct infringement under § 271 (a), for it is settled that if there is no direct infringement of a patent there can be no contributory infringement. In Mercoid v. Mid-Continent, supra, it was said: “In a word, if there is no infringement of a patent there can be no contributory infringer,” 320 U. S., at 677, and that “if the purchaser and user could not be amerced as an infringer certainly one who sold to him . . . cannot be amerced for contributing to a non-existent infringement.” Id., at 674.⁷ It is plain that § 271 (c)- — a part of the Patent Code enacted in 1952 — made no change in the fundamental precept that there can be no contributory infringement in the absence of a direct infringement. That section defines contributory infringement in terms of direct infringement — namely the sale of a component of a patented combination or machine for use “in an infringement of such patent.” And § 271 (a) of the new Patent Code, which defines “infringement,” left intact the entire body of case law on direct infringement.⁸ The determinative question, therefore, comes down to whether the car owner would infringe the combination patent by replacing the worn-out fabric element of the patented convertible top on his car, or even more specifically, whether such a replacement by the car owner is infringing “reconstruction” or permissible “repair.”

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 combination which a purchaser buys, and that repair or replacement of the worn-out, damaged or destroyed part is but an exercise of the right “to give duration to that which he owns, or has a right to use as a whole.” Ibid,.9

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 that of the other components — and, for these reasons, concluded that “an owner would [not] rationally believe that ... he was making only a minor repair” in replacing the worn-out fabric, but that, instead, the replacement “would be counted a major reconstruction:” 270 F. 2d, at 205. We think that test was erroneous.

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 combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“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.” 320 U. S., at 667.

And in Mercoid Corp. v. Minneapolis-Honeywell Co., supra, 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.” 320 U. S., at 684.

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.” Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U. S. 325, 336; Heyer v. Duplicator Mfg. Co., supra, at 102; and Wilson v. Simpson, supra, at 123. We hold that maintenance of the “use of the whole” of the patented combination through replacement of a spent, unpatented element does not constitute reconstruction.

The decisions of this Court require the conclusion that reconstruction of a patented entity, comprised of unpat-ented 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 CottonTie 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.

1 There are 10 claims in the patent. Claims 1 through 9 of the patent each specifically begin: “In a convertible automobile body, the combination of . . . Claim 10 does not contain the word “combination” but nevertheless equally claims only a combination.

2 Among other elements in the claims are the automobile body structure or tonneau, a folding bow structure, a sealing strip, and a wiping arm.

3 Graver Mfg. Co. v. Linde Co., 336 U. S. 271, 277; Universal Oil Co. v. Globe Oil & Refining Co., 322 U. S. 471, 484; Milcor Steel Co. v. Fuller Co., 316 U. S. 143, 145-146.

4 Mercoid Corp. v. Mid-Continent Co., 320 U. S. 661, 667; Mercoid Corp. v. Minneapolis-Honeywell Co., 320 U. S. 680, 684; McClain v. Ortmayer, 141 U. S. 419, 423-424; Pennock v. Dialogue, 2 Pet. 1, 16.

5 Section 271 (a) provides:

“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.”

6 Section 271 (c) is as follows:

“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 nonin-fringing use, shall be liable as a contributory infringer.” (Emphasis added.)

7 Although these statements were made in the dissenting opinions of Mr. Justice FRANKFURTER and Mr. Justice Roberts, respectively, there is nothing in the majority opinion remotely suggesting any disagreement with the fundamental conclusion that there can be no contributory infringement in the absence of direct infringement.

8 The reviser’s note on § 271 (a) specifically stated that it is "declaratory only.” 35 U. S. C. A., following §271.

“The prior statute had no section defining or dealing with what constitutes infringement of a patent,” and § 271 (a) was adopted “for completeness.” Federico, Commentary on the New Patent Act, 35 U. S. C. A., preceding § 1, at p. 51.

9 None of this Court’s later decisions dealing with the distinctions between “repair” and “reconstruction” have added to the exposition made in Wilson v. Simpson, supra, and that opinion has long been recognized as the Court’s authoritative expression on the subject. Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, and Heyer v. Duplicator Mfg. Co., 263 U. S. 100, held that an owner or licensee of a patented machine or combination does not infringe the patent by replacing an unpatented element of the combination which has only a temporary period of usefulness, so that replacement is necessary for continued utilization of the machine or combination as a whole. Those cases came clearly within the Wilson case. Cotton-Tie Co. v. Simmons, 106 U. S. 89, the only other repair-reconstruction ease decided by this Court since Wilson, found infringement by one who bought up, as scrap metal, patented metal straps, used in tying cotton bales, after the straps had been used and severed (in unbinding the bales), and who then welded or otherwise reconnected the straps at the severed point and resold them for further use in baling cotton. The ease is distinguishable on its facts, and the fact that the ties were marked “Licensed to use once only,” was deemed of importance by the Court. Cf. Henry v. A. B. Dick Co., 224 U. S. l.

10 Although the Mercoid cases involve the doctrine of patent misuse, which is not an issue in this case, they also specifically delimit the character of a combination patent monopoly and it is upon that matter that they are relevant here.