Aro Manufacturing Co v. Convertible Top Replacement Co, No. 21

CourtUnited States Supreme Court
Writing for the CourtWHITTAKER
Citation81 S.Ct. 599,5 L.Ed.2d 592,365 U.S. 336,128 USPQ 354
PartiesARO MANUFACTURING CO., Inc., et al., Petitioners, v. CONVERTIBLE TOP REPLACEMENT CO., Inc
Docket NumberNo. 21
Decision Date27 February 1961

365 U.S. 336
81 S.Ct. 599
5 L.Ed.2d 592
ARO MANUFACTURING CO., Inc., et al., Petitioners,

v.

CONVERTIBLE TOP REPLACEMENT CO., Inc.

No. 21.
Argued Oct. 13 and 17, 1960.
Decided Feb. 27, 1961.
Rehearing Denied April 17, 1961.

See 365 U.S. 890, 81 S.Ct. 1024.

Page 337

Mr. David Wolf, Boston, Mass., for petitioners.

Mr. Ralph S. Spritzer, Washington, D.C., for United States, as amicus curiae.

Mr. Elliott I. Pollock, Washington, D.C., for respondent.

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

Page 338

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, 80 S.Ct. 609, 4 L.Ed.2d 553.

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 pages 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

Page 339

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

Page 340

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, 64 S.Ct. 268, 272, 88 L.Ed. 376, 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. Minneapolis-Honeywell Regulator Co., 320 U.S. 680, 684, 64 S.Ct. 278, 280, 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, 12 S.Ct. 76, 35 L.Ed. 800; Pennock v. Dialogue, 2 Pet. 1, 16, 7 L.Ed. 327.

It follows that petitioners' manufacture and sale of the fabric is not a direct infringement under 35 U.S.C. § 271(a), 35 U.S.C.A. § 271(a).5 Cimiotti Unhairing Co. v. American Fur Co., 198 U.S. 399, 410, 25 S.Ct. 697, 702, 49 L.Ed. 1100; Eames v. Godfrey, 1 Wall. 78, 79, 17 L.Ed. 547; Prouty v. Ruggles, 16 Pet. 336, 341, 10 L.Ed. 985; U.S. Industries, Inc., v. Otis Engineering Co., 5 Cir., 254 F.2d 198, 203. But the question remains whether petitioners' manufacture and sale of the fabric constitute a contributory infringement of the patent under 35 U.S.C. § 271(c), 35 U.S.C.A.

Page 341

s 271(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 page 677, 64 S.Ct. at page 276, 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., 320 U.S. at page 674, 64 S.Ct. at page 275.7 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

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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 wornout 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, 13 L.Ed. 66—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 page 123. The Court explained that it is 'the use of the whole' of the

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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, 2 Cir., 148 F.2d 416, 425: '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...

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382 practice notes
  • Bandag, Inc. v. Al Bolser's Tire Stores, Inc., Nos. 83-1123
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 8, 1984
    ...As it is the claims of a patent which are the sole measure of the patent grant, Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600, 5 L.Ed.2d 592, 128 USPQ 354, 356-57 (1961), the protected invention of the Carver patent is, as a matter of law, a ......
  • Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp., Civ. A. No. 11421.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • May 27, 1963
    ...in the absence of direct infringement there can be no contributory infringement. Aro Mfg. Co. v. Convertible Top Replacement Co., 1961, 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592. Plaintiffs have failed to prove that the only process by which the boards could be made would be an infringing o......
  • Ab Iro v. Otex, Inc., Civ. A. No. 77-2114-0.
    • United States
    • United States District Courts. 4th Circuit. United States District Court of South Carolina
    • April 18, 1983
    ...Application of Kirchner, 305 F.2d 897, 900, 49 CCPA 1234 (C.C.P.A.1962); accord Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600-01, 5 L.Ed.2d 592 reh. denied 365 U.S. 890, 81 S.Ct. 1024, 6 L.Ed.2d 201 (1961) ("the claims made in the patent are ......
  • Wahpeton Canvas Co. v. Bremer, No. C 93-4093.
    • United States
    • United States District Courts. 4th Circuit. Northern District of West Virginia
    • May 22, 1995
    ...but that the owner does not have the right to reconstruct that device. See generally Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 338-46, 81 S.Ct. 599, 600-05, 5 L.Ed.2d 592 (1961) ("Aro I"). Although statement of this rule of law is easily made, distinguishing between the......
  • Request a trial to view additional results
378 cases
  • Bandag, Inc. v. Al Bolser's Tire Stores, Inc., Nos. 83-1123
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 8, 1984
    ...As it is the claims of a patent which are the sole measure of the patent grant, Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600, 5 L.Ed.2d 592, 128 USPQ 354, 356-57 (1961), the protected invention of the Carver patent is, as a matter of law, a ......
  • Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp., Civ. A. No. 11421.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • May 27, 1963
    ...in the absence of direct infringement there can be no contributory infringement. Aro Mfg. Co. v. Convertible Top Replacement Co., 1961, 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592. Plaintiffs have failed to prove that the only process by which the boards could be made would be an infringing o......
  • Ab Iro v. Otex, Inc., Civ. A. No. 77-2114-0.
    • United States
    • United States District Courts. 4th Circuit. United States District Court of South Carolina
    • April 18, 1983
    ...Application of Kirchner, 305 F.2d 897, 900, 49 CCPA 1234 (C.C.P.A.1962); accord Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600-01, 5 L.Ed.2d 592 reh. denied 365 U.S. 890, 81 S.Ct. 1024, 6 L.Ed.2d 201 (1961) ("the claims made in the patent are ......
  • Wahpeton Canvas Co. v. Bremer, No. C 93-4093.
    • United States
    • United States District Courts. 4th Circuit. Northern District of West Virginia
    • May 22, 1995
    ...but that the owner does not have the right to reconstruct that device. See generally Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 338-46, 81 S.Ct. 599, 600-05, 5 L.Ed.2d 592 (1961) ("Aro I"). Although statement of this rule of law is easily made, distinguishing between the......
  • Request a trial to view additional results
2 books & journal articles
  • Compulsory Patent Licensing in the Time of COVID-19: Views from the United States, Canada, and Europe
    • United States
    • Landslide Nbr. 13-2, November 2020
    • November 1, 2020
    ...Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). 2. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1961). 3. Giles S. Rich, The Extent of the Protection and Interpretation of Claims—American Perspectives , 21 Int’l Rev. Indus. Prop. & Co......
  • The 'Essence' of an Invention Is as Important as the Claims
    • United States
    • Landslide Nbr. 13-2, November 2020
    • November 1, 2020
    ...Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). 2. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1961). 3. Giles S. Rich, The Extent of the Protection and Interpretation of Claims—American Perspectives , 21 Int’l Rev. Indus. Prop. & Co......

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