Aro Manufacturing Company v. Convertible Top Replacement Company (365 U.S. 336)/Concurrence Brennan

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United States Supreme Court

365 U.S. 336

Aro Manufacturing Company  v.  Convertible Top Replacement Company

 Argued: Oct. 13 and 17, 1960. --- Decided: Feb 27, 1961

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, 29 S.Ct. 503, 53 L.Ed. 816; Davis Electrical Works v. Edison Electric Light Co., 1 Cir., 60 F. 276; cf. Williams v. Hughes Tool Co., 10 Cir., 186 F.2d 278. These holdings applied the long-established standard for determination of 'repair' or 'reconstruction.' Under that standard there is no single test to which all must yield; rather the determination is to be based upon the consideration of a number of factors. Wilson v. Simpson, 9 How. 109, 13 L.Ed. 66; Heyer v. Duplicator Mfg. Co., 263 U.S. 100, 44 S.Ct. 31, 68 L.Ed. 189. [1] Appropriately to be considered are the life of the part replaced in relation to the useful life of the whole combination, [2] the importance of the replaced element to the inventive concept, [3] the cost of the component relative to the cost of the combination, [4] the common sense understanding and intention of the patent owner and the buyer of the combination as to its perishable components, [5] whether the purchased component replaces a worn-out part or is brought for some other purpose, [6] and other pertinent factors. [7]

It is true that some decisions of this Court in patent misuse cases [8] raised doubt as to the continuing vitality of this standard in actions such as this one for relief from contributory infringement. But the Congress swept away that doubt when it gave the standard statutory sanction in 1952. [9] My Brother WHITTAKER'S test that '(m)ere 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' plainly would not heed the congressional mandate. Instead Congress meant, as I read the legislative history of the 1952 Act, that the courts should recognize, in actions for contributory infringement, the distinction between components stated in Wilson v. Simpson, supra, the leading case in this field:

'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 § 271(c), when told that manufacturers of replacement parts for automobiles, tractors, and other machines had protested against the section in fear of being held contributory infringers under it, replied: 'Whether or not they would be liable would depend on the facts in each particular case. And I think that the best way to clear that up is to take up section (c) and deal with the matter specifically and point out to you the limitations that are there, which have to be met before anybody is held liable, and then leave it to you to decide whether a parts supplier should be held liable or not, depending on the kind of a part he may be supplying. If the part he is supplying is in substance the very thing which was invented, it seems to me personally, that he is an infringer, and he should not be let off on some little technicality that there is something minor in the whole apparatus that he is not supplying.' Hearings, H.R. 3760, 82d Cong., 1st Sess., supra, p. 153. He added: 'in each case you would have to look at the details and see what was invented, and in effect whether the alleged infringer is appropriating somebody else's invention, or whether he is not.' Hearings, supra, p. 157.

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 Federal Rule of Civil Procedure 52(a), 28 U.S.C.A. See United States v. E.I. Du Pont de Nemours & Co., 353 U.S. 586, 598, 77 S.Ct. 872, 879, 1 L.Ed. 1057. In no previous case presenting the question of 'repair' or 'reconstruction' has this Court believed itself restrained from making an independent determination. Wilson v. Simpson, supra; American Cotton-Tie Co. v. Simmons, supra; Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U.S. 425, 14 S.Ct. 627, 38 L.Ed. 500; Leeds & Catlin Co. v. Victor Talking Machine Co., supra; Heyer v. Duplicator Mfg. Co., supra. And here the error of the two courts below is manifest. The life of the top was approximately three years in contrast to the several times longer life of the other components of the combination. The top was replaceable at a cost of from $30 to $70 depending on the fabric; in contrast the cost of other elements of the combination was approximately $400. These considerations of themselves suggest that the replacement was mere 'repair' of the worn component and not 'reconstruction' of the patented combination. Surely they support the inference that all concerned knew that the fabric of the top would become weather-beaten or unable to perform its protective function long before those other components, not so exposed and more durable as well, wore out. Its perishable nature coupled with its fractional cost as compared to the whole combination and its ready replaceability all point to the conclusion reached here. And particularly persuasive, I think, that this replacement was mere 'repair,' is the role of the top relative to other components in the inventive concept. Patentable novelty inhered not merely in the shape of the fabric; the record shows that a wiping arm which pressed the material in such way as to create a seal at the belt line of the vehicle played a significantly important role in the inventive concept. The claim for the combination is that it made possible an automatic top, made the top weathertight and prevented unauthorized access to the vehicle. The wiper arm, rather than the shape of the material alone, accomplished the inventive purposes of providing a top which was weathertight and prevented unauthorized access. [10] The shape of the fabric was thus not the essence of the device and in all the circumstances it seems reasonable and sensible to treat the replacement of the top as 'repair.'

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.

Mr. Justice HARLAN, whom Mr. Justice FRANKFURTER and Mr. Justice STEWART join, dissenting.

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, 13 L.Ed. 66; American Cotton-Tie Co. v. Simmons, 106 U.S. 89, 1 S.Ct. 52, 27 L.Ed. 79; Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U.S. 425, 14 S.Ct. 627, 38 L.Ed. 500; Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. 325, 29 S.Ct. 503, 53 L.Ed. 816; Heyer v. Duplicator Mfg. Co., 263 U.S. 100, 44 S.Ct. 31, 68 L.Ed. 189. 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 § 271 of the Patent Act of 1952. 35 U.S.C. § 271, 35 U.S.C.A. § 271. [1]

In this case the District Court and the Court of Appeals upon full consideration have concurred in finding that Aro's replacement-supplying of the fabric portion of respondent's convertible automobile tops contributorily infringed the latter's territorial rights under the valid Mackie-Duluk combination patent, in that such activity constituted a deliberate participation on Aro's part in a forbidden reconstruction of the patented combination. In reversing, the Court holds that there can be no direct infringement (and hence, of course, no contributory infringement) of a combination patent by replacement of any of the components of the patented entity unless (1) such component is itself separately patented or (2) the entire entity is rebuilt at one time. Since the fabric cover component of the Mackie-Duluk top was not itself separately patented, and since it constituted but one part of the patented combination, the Court concludes that Aro's supplying of such covers for replacement on cars equipped with respondent's tops did not as a matter of law constitute contributory infringement. [2]

My Brother BRENNAN'S opinion, while disagreeing with that conclusion, would reverse because on its view of the record, untrammeled by the contrary findings and conclusions of the two lower courts, it is concluded that what here took place constituted 'repair' and not 'reconstruction' of the Mackie-Duluk tops.

I am unable to subscribe to either of these views.

I believe that the narrow concept of what constitutes impermissible reconstruction, reflected in the opinion of the Court, departs from detablished principles-principles which, it will be shown, were approved by Congress when it enacted § 271 of the new Patent Act, over objections of the Department of Justice altogether comparable to the position which it now advances as amicus in the present case.

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 35 U.S.C. § 271(c), 35 U.S.C.A. § 271(c), limits contributory infringement to that which would be direct infringement, and that § 271(a), dealing with direct infringement, leaves intact the pre-existing case law. The cases cited above amply demonstrate that there is no single yardstick for determining whether particular substitutions of new for original unpatented parts of a patented combination amount to permissible repair or forbidden reconstruction. The matter is to be resolved 'on principles of common sense applied to the specific facts' of a given case, Heyer, supra, 263 U.S. at page 102, 44 S.Ct. at page 32. The single simple rule of 'reconstruction' which the Court finds in those cases can, in my view, only be divined at the expense of reconstructing the decisions themselves.

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, 9 How. at page 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 this was an impermissible reconstruction of the patented combination, [3] the Court said:

'Whatever right to 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 he 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, as in Wilson v. Simpson, 9 How. 109 (13 L.Ed. 66) in place of cutters worn out by use. 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.' 106 U.S. at pages 93-94, 1 S.Ct. at page 56.

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 (152 U.S. at page 433, 14 S.Ct. at page 630) that there 'are doubtless many cases to the effect that the manufacture and sale of a single element of a combination, with intent that it shall be united to the other elements, and so complete the combination, is an infringement,' the Court found the situation before it distinguishable in that 'the element (paper roll) made by the alleged infringer is an article of manufacture perishable in its nature, which it is the object of the mechanism (the dispenser) to deliver, and which must be renewed periodically, whenever the device is put to use.' Ibid. On similar grounds the Court in Heyer, supra, found no contributory infringement in the intentional supplying of unpatented gelatine bands for use in a duplicating machine covered by a combination patent, of which one element was the gelatine band.

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.' 233 U.S. at page 336, 29 S.Ct. at page 507.

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 (233 U.S. at page 333, 29 S.Ct. at page 505), '(i)t can make no difference as to the infringement or noninfringement 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, thd different results reached in the cases, two finding 'reconstruction' and three only 'repair,' also vitiate the reasoning of the Court, in that they show that the issue of reconstruction vel non turns not upon any single factor, but depends instead upon a variety of circumstances, differing from case to case. The true rule was well put by this same Court of Appeals in its earlier decision in Goodyear Shoe Machinery Co. v. Jackson, 112 F. 146, 150:

'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, 64 S.Ct. 268, 88 L.Ed. 376; 320 U.S. 680, 64 S.Ct. 278, 88 L.Ed. 396, is, in my opinion, entirely inapposite, since those cases, as the Court recognizes, 365 U.S., at page 344, 81 S.Ct. at page 604, note 10, supra, dealt with the issue of patent misuse, an issue which specifically is not before the Court at this time. [5] I realize that some of the language in the first Mercoid case (320 U.S. at pages 667-669, 64 S.Ct. at pages 272 273), and more particularly its disapproving remarks about Leeds & Catlin (id., 320 U.S. at page 668, 64 S.Ct. at page 272), may be said to cast doubt on what it appears to me the contributory infringement cases plainly establish. Yet I cannot believe that Mercoid is properly to be read as throwing into discard all the teaching of the repair-reconstruction cases. What was said in Mercoid about contributory infringement must be read in the context of Mercoid's claim, found to have been established, that Mid-Continent had misused its combination patent by attempting in effect to wield it as a weapon to monopolize the sale of an unpatented element, a claim which is not here made.

I think it significant that in stating (320 U.S. at page 668, 64 S.Ct. at page 272) 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 pages 668-669 of 320 U.S., at page 272 of 64 S.Ct.:

'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 (Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 62 S.Ct. 402, 86 L.Ed. 363)) 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 (Carbice Corp. v. American Patents Corp., 283 U.S. 27, 51 S.Ct. 334, 75 L.Ed. 819) and the conventional rules governing either direct or contributory infringement, the former prevails.' (Italics supplied.) Thus Mercoid, far from modifying the doctrine of the Wilson line of cases as to what constitutes contributory infringement, assumed that doctrine and defined the special circumstances when the court would refuse to give a patentee the benefit of that doctrine. [6] Those circumstances are not present in this case.

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]

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 Federal Rule of Civil Procedure 52(a)' and to allow the 'making (of) an independent application of the proper standard' to the facts in this case. (Italics supplied.) For reasons larger than this particular litigation I cannot agree that it is either necessary or appropriate for us to substitute our particular judgment on this particular application of correct standards to the facts.

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, 69 S.Ct. 535, 537, 539, 93 L.Ed. 672, 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 Court, could provide greater guidance to either courts or litigants than would a mere statement of approbation for the standards espoused by the courts below.

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, 9 Cir., 210 F.2d 483; cf. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 153, 154, 71 S.Ct. 127, 130, 131, 95 L.Ed. 162. Whether this practice be considered as compelled by the dictates of good sense or by Rule 52(a), surely particular judgments fairly and reasonably reached in two lower courts in light of correct legal standards deserve at least that same deference from us.

I would affirm.


^1  The standard has been variously expressed. See, e.g., 'Whether the bounds of legitimate repair have been exceeded must be determined upon the facts of each case as it is presented.' Morrin v. Robert White Engineering Works, 2 Cir. 143 F. 519, 520. 'In the absence of a crucial test to which all must yield, the only aid comes from various minor or incidental considerations, and their combined effect.' Davis Electrical Works v. Edison Electric Light Co., 1 Cir., 60 F. 276, 280. 'The right, in our view, must depend in every case upon the special facts of the case as they show the relation of the two classes of parts-those supplied and those remaining in the original construction-to the patented unit. * * * there might be a structure where the putting in of a certain number of new parts would be 'reconstruction,' whereas the putting in of a smaller number would be 'repair,' or even where the putting in of one new part would be reconstruction but the putting in of two or three would not be, depending in each case upon whether, after the replacement, the structure as a whole could reasonably be said to be a new structure or the old one.' Automotive Parts Co. v. Wisconsin Axle Co., 6 Cir., 81 F.2d 125, 127. '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.' Goodyear Shoe Machinery Co. v. Jackson, 1 Cir., 112 F. 146, 150. 'The dividing line between repairs and a making over cannot be verbally located. What has been done can with more or less confidence be pronounced to be one or the other, but neither the one nor the other can be defined.' Hess-Bright Mfg. Co. v. Bearings Co., D.C., 271 F. 350, 352.

^2  Wilson v. Simpson, supra; Heyer v. Duplicator Manufacturing Co., supra; Williams v. Barnes, 7 Cir., 234 F. 339; Micromatic Home Corp. v. Mid-West Abrasive Co., 6 Cir., 177 F.2d 934; Payne v. Dickinson, 3 Cir., 109 F.2d 52; El Dorado Foundry, Machine & Supply Co. v. Fluid Packed Pump Co., 8 Cir., 81 F.2d 782; Slocomb & Co., Inc., v. A. C. Layman Machine Co., D.C., 227 F. 94, affirmed, 3 Cir., 230 F. 1021. In the Slocomb case the Court said, 227 F. at page 98: 'If * * * patented mechanism be composed of various parts and elements the most expensive of which have an average life of twenty years, and other parts or features of comparatively trifling cost are subjected in the operation of the mechanism to such wear as to require renewal or replacement within a period of a few months, or of a year or two, it would seem reasonable and sensible to treat such renewal or replacement as involving repairs in contradistinction to reconstruction.'

^3  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.' 60 F. at pages 279-280. Morrin v. Robert White Engineering Works, supra, 143 F. at page 519.

^4  Heyer v. Duplicator Mfg. Co., supra; American Safety Razor Corp. v. Frings Bros. Co., 3 Cir., 62 F.2d 416; El Dorado Foundry, Machine & Supply Co. v. Fluid Packed Pump Co., supra; Slocomb & Co., Inc., v. Layman Machine Co., supra.

^5  Westinghouse Elec. & Mfg. Co. v. Hesser, 6 Cir., 131 F.2d 406, 410: 'Where the perishable nature of the parts are recognized by the patentee, and where the parts are adapted to be removed from the patented combination and, from time to time, replaced, replacement of such parts is repair and not reconstruction.'

And as regards indicia of an understanding see El Dorado Foundry, Machine & Supply Co. v. Fluid Packed Pump Co., supra; Slocomb & Co., Inc., v. Layman Machine Co., supra; Electric Auto-Lite Co. v. P. & D. Mfg. Co., 2 Cir., 78 F.2d 700.

^6  See Leeds & Catlin Co. v. Victor Talking Machine Co., supra; Connecticut Telephone & Elec. Co. v. Automotive Equipment Co., D.C., 14 F.2d 957, affirmed, 3 Cir., 19 F.2d 990.

^7  Is the replaced part the dominant structural element of the combination? Southwestern Tool Co. v. Hughes Tool Co., 10 Cir., 98 F.2d 42; Automotive Parts Co. v. Wisconsin Axle Co., supra, 81 F.2d at page 127: 'if the new parts so dominate the structural substance of the whole as to justify the conclusion that it has been made anew, there is a rebuilding or reconstruction; and conversely, where the original parts, after replacement, are so large a part of the whole structural substance as to preponderate over the new, there has not been a reconstruction but only repair.'

Has there been physical destruction of the combination from use of the component? Cotton-Tie Co. v. Simmons, 106 U.S. 89, 1 S.Ct. 52, 27 L.Ed. 79.

^8  See, e.g., Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661, 669, 64 S.Ct. 268, 273, 'The result of this decision, together with those which have preceded it, is to limit substantially the doctrine of contributory infringement. What residuum may be left we need not stop to consider.'

^9  35 U.S.C. § 271, 35 U.S.C.A. § 271. The purpose of (c) of this section appears in the House Judiciary Committee Report, H.R.Rep.No.1923 on H.R. 7794, 82d Cong., 2d Sess., p. 9. 'The doctrine of contributory infringement has been part of our law for about 80 years. It has been applied to enjoin those who sought to cause infringement by supplying someone else with the means and directions for infringing a patent. One who makes a special device constituting the heart of a patented machine and supplies it to others with directions (specific or implied) to complete the machine is obviously appropriating the benefit of the patented invention. It is for this reason that the doctrine of contributory infringement, which prevents appropriating another man's patented invention, has been characterized as 'an expression both of law and morals.' 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.' The legislative history makes it clear that paragraph (d) complements (c) with the view to avoid the application of the patent misuse doctrine to conduct such as that of the patent owner in the present case. See Hearings, H.R. 3760, 82d Cong., 1st Sess., Subcommittee of the House Judiciary Committee, 1951, pp. 161-162, 169-175.

^10  This appears from the patent claims and from the testimony of respondent's patent and engineering experts. The following representation was made in connection with amended claims: 'The real invention is fastening the folding material considerably below the top of the tonneau and then using a wiping arm automatically operated by the bow structure for wiping the inside of the folding material as the top is raised and pressing it against the top of the tonneau.'

^1  '(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 noninfringing use, shall be liable as a contributory infringer.'

^2  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

flaps presented no great problem until the advent of the so-called convertible automobile with a folding top operated mechanically rather than manually. The problem presented by the quarter flaps of tops of this kind was first partially solved by fastening the bottom of the flap to the outside of the top of the body of the vehicle with 'releasable fastening means,' that is to say, with some sort of slide fastening device which would detach automatically when the top was lowered. The major part of the problem remained, however, for when the top was put up the flaps had to be fastened manually, which meant that the operator was required to get out of the car altogether, or at least to reach out, often, of course, in the rain. The object of the Mackie-Duluk patent was 'to provide an automatic fastening and sealing means at the top and sides of the tonneau of the convertible' which 'never has to be operated or touched by the driver of the car.' And, as we have already indicated, the District Court found that the patentees succeeded in attaining their object by devising a patentable combination of elements.

'The Mackie-Duluk device consisted of providing an elongated flap intergral 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 pages 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 page 201.

^3  While, as the Court remarks (365 U.S. at page 343, 81 S.Ct. at page 610, note 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.

^4  Compare note 7, infra.

^5  The District Court found against Aro's claim of patent misuse based on respondent's acquisition of territorial rights in the Mackie-Duluk patent. Aro did not appeal that finding.

^6  It seems clear from the legislative history of the 1952 Act that Congress intended (1) to reaffirm the doctrine of contributory infringement as laid down in Wilson v. Simpson and reasserted in cases like Leeds & Catlin, (2) to give that doctrine precedence against a claim of patent misuse as conceived in the Mercoid cases, at least where the misuse is said to inhere simply in assertion of patent rights. Both the proponents of the statute and the Department of Justice which opposed it assumed that contributory infringement, as defined in the Wilson line of cases, was one thing, and misuse, as then most recently defined in Mercoid, another. See Hearings before Subcommittee of House Judiciary Committee on H.R. 3866, 81st Cong., 1st Sess. 53-59 (1949); Hearings before Subcommittee of House Judiciary Committee on H.R. 3760, 82d Cong., 1st Sess. 168-175 (1951). The opinion of the Court seems to reconfirm Mercoid to fuller effectiveness than it had even before the 1952 Act by treating it as if the test of whether there was contributory infringement at all was to be found in its language.

^7  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 § 271 without amendment.

'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 objectors 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).

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