Aro Manufacturing Co v. Convertible Top Replacement Co, No. 75

CourtU.S. Supreme Court
Writing for the CourtBRENNAN
Citation377 U.S. 476,84 S.Ct. 1526,141 USPQ 681,12 L.Ed.2d 457
Docket NumberNo. 75
Decision Date08 June 1964
PartiesARO MANUFACTURING CO., Inc., et al., Petitioners, v. CONVERTIBLE TOP REPLACEMENT CO., Inc

377 U.S. 476
84 S.Ct. 1526
12 L.Ed.2d 457
ARO MANUFACTURING CO., Inc., et al., Petitioners,

v.

CONVERTIBLE TOP REPLACEMENT CO., Inc.

No. 75.
Argued Feb. 17, 1964.
Decided June 8, 1964.

[Syllabus from pages 477-478 intentionally omitted]

Page 478

Charles Hieken, Boston, Mass., for petitioners.

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

Mr. Justice BRENNAN delivered the opinion of the Court.

Respondent Convertible Top Replacement Co., Inc., (CTR) acquired by assignment from the Automobile Body Research Corporation (AB) all rights for the territory of Massachusetts in United States Patent No. 2,569,724, known as the Mackie-Duluk patent. This is a combination patent covering a top-structure for automobile 'convertibles.' Structures embodying the patented combination were included as original equipment in 1952—1954 models of convertibles manufactured by the General Motors Corporation and the Ford Motor Company. They were included in the General Motors cars by authority of a license granted to General Motors by AB; Ford, however, had no license during the 1952—1954

Page 479

period, and no authority whatever under the patent until July 21, 1955, when it entered into an agreement, discussed later, with AB; Ford's manufacture and sale of the automobiles in question therefore infringed the patent. Petitioner Aro Manufacturing Co., Inc. (Aro), which is not licensed under the patent, produces fabric components designed as replacements for wornout fabric portions of convertible tops; unlike the other elements of the topstructure, which ordinarily are usable for the life of the car, the fabric portion normally wears out and requires eplacement after about three years of use. Aro's fabrics are specially tailored for installation in particular models of convertibles, and these have included the 1952—1954 General Motors and Ford models equipped with the Mackie-Duluk top-structures.

CTR brought this action against Aro in 1956 to enjoin the alleged infringement and contributory infringement, and to obtain an accounting, with respect to replacement fabrics made and sold by Aro for use in both the General Motors and the Ford cars embodying the patented structures. The interlocutory judgment entered for CTR by the District Court for the District of Massachusetts, 119 U.S.P.Q. 122, and affirmed by the Court of Appeals for the First Circuit, 270 F.2d 200, was reversed here. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 ('Aro I'), petition for rehearing or alternative motion for amendment or clarification denied, 365 U.S. 890, 81 S.Ct. 1024, 6 L.Ed.2d 201. Our decision dealt, however, only with the General Motors and not with the Ford cars. Like the Court of Appeals, we treated CTR's right to relief as depending wholly upon the question whether replacement of the fabric portions of the convertible tops constituted infringing 'reconstruction' or permissible 'repair' of the patented combination. The lower courts had held it to constitute 'reconstruction,' making the car owner for whom it was performed a direct infringer and Aro, which made

Page 480

and sold the replacement fabric, a contributory infringer; we disagreed and held that it was merely 'repair.' The reconstruction-repair distinction is decisive, however, only when the replacement is made in a structure whose original manufacture and sale have been licensed by the patentee, as was true only of the General Motors cars; when the structure is unlicensed, as was true of the Ford cars, the traditional rule is that even repair constitutes infringement. Thus, the District Court had based its ruling for CTR with respect to the Ford cars on the alternative ground that, even if replacement of the fabric portions constituted merely repair, the car owners were still guilty of direct infringement, and Aro of contributory infringement, as to these unlicensed and hence infringing structures. 119 U.S.P.Q. 122, 124. This aspect of the case was not considered or decided by our opinion in Aro I.

On remand, however, another judge in the District Court read our opinion as requiring the dismissal of CTR's complaint as to the Ford as well as the General Motors cars, and entered judgment accordingly. CTR appealed the dismissal insofar as it applied to the Ford cars, and the Court of Appeals reinstated the judgment in favor of CTR to the extent. 312 F.2d 52. In our view the Court of Appeals was correct in holding that its 'previous decision in this case was not reversed insofar as unlicensed Ford cars are concerned.' 312 F.2d, at 57.1

Page 481

However, we granted certiorari, 372 U.S. 958, 83 S.Ct. 1015, 10 L.Ed.2d 11, to consider that question, and to consider also the issue that had not been decided in Aro I: whether Aro is liable for contributory infringement, under 35 U.S.C. § 271(c), with respect to its manufacture and sale of replacement fabrics for the Ford cars.2

Page 482

I.3

CTR contends, and the Court of Appeals held, that since Ford infringed the patent by making and selling the top-structures without authority from the patentee,4 persons who purchased the automobiles from Ford likewise infringed by using and repairing the structures; and hence Aro, by supplying replacement fabrics specially designed to be utilized in such infringing repair, was guilty of contributory infringement under 35 U.S.C. § 271(c). In Aro I, 365 U.S., at 341—342, 81 S.Ct. at 602, he Court said:

'It is admitted that petitioners (Aro) 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

Page 483

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. * * * 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. 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 * * *.'

Similarly here, to determine whether Aro committed contributory infringement, we must first determine whether the car owners, by replacing the worn-out fabric element of the patented top-structures, committed direct infringement. We think it clear, under § 271(a) of the Patent Code and the 'entire body of case law on direct infringement' which that section 'left intact,' that they did.

Section 271(a) provides that 'whoever without authority makes, uses or sells any patented invention * * * infringes the patent.' It is not controverted—nor could it be—that Ford infringed by making and selling cars embodying the patented top-structures without any authority from the patentee. If Ford had had such authority, its purchasers would not have infringed

Page 484

by using the automobiles, for it is fundamental that sale of a patented article by the patentee or under his authority carries with it an 'implied license to use.' Adams v. Burke, 17 Wall. 453, 456, 21 L.Ed. 700; United States v. Univis Lens Co., 316 U.S. 241, 249, 250—251, 62 S.Ct. 1088, 1092, 1093, 86 L.Ed. 1408. But with Ford lacking authority to make and sell, it could by its sale of the cars confer on the purchasers no implied license to use, and their use of the patented structures was thus 'without authority' and infringing under § 271(a). 5 Not only does that provision explicitly regard an unauthorized user of a patented invention as an infringer, but it has often and clearly been held that unauthorized use, without more, constitutes infringement. Birdsell v. Shaliol, 112 U.S. 485, 5 S.Ct. 244, 28 L.Ed. 768; Union Tool Co. v. Wilson, 259 U.S. 107, 114, 42 S.Ct. 427, 430, 66 L.Ed. 848; see Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 32—33, 50 S.Ct. 9, 74 L.Ed. 147; General Talking Pictures Corp. v. Western Electric Co., 305 U.S. 124, 127, 59 S.Ct. 116, 117, 83 L.Ed. 81.

If the owner's use infringed, so also did his repair of the top-structure, as by replacing the worn-out fabric component. Where use infringes, repair does also, for it perpetuates the infringing use.

'No doubt * * * a patented article may be required without making the repairer an infringer, * * * but not where it is done for one who is. It is only where the device in patented form has come lawfully into the hands of the person for or by whom it is repaired that this is the case. In other words, if one without right constructs or disposes of an infringing machine, it affords no protection to another to have merely repaired it; the repairer, by supplying an essential part of the patented combination, contributing by

Page 485

so much to the perpetuation of the infringement.' Union Special Mach. Co. v. Maimin, 161 F. 748, 750 (C.C.E.D.Pa.1908), aff'd, 165 F. 440 (C.A.3d Cir. 1908).

Accord, Remington Rand Business Serv., Inc., v. Acme Card System Co., 71 F.2d 628, 630 (C.A.4th Cir. 1934), cert. denied, 293 U.S. 622, 55 S.Ct. 236, 79 L.Ed. 710; 2 Walker, Patents (Deller ed.1937), at 1487. Consequently replacement of worn-out fabric components with fabrics sold by Aro, held in Aro I to constitute 'repair' rather than 'reconstruction' and thus to be permissible in the case of licensed General Motors...

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418 practice notes
  • Dow Chemical Co. v. Mee Industries, No. 6:00CV437-ORL-31DAB.
    • United States
    • United States District Courts. 11th Circuit. United States District Court of Middle District of Florida
    • September 19, 2002
    ...the patent which proscribes that use. Hewlett-Packard Co., 909 F.2d at 1469 n. 4 (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964)). In order to establish contributory infringement, knowledge (but not the intent) that someone's ......
  • Lighting Ballast Control, LLC v. Philips Electronics North America Corp., Civil Action No. 7:09–CV–29–O.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • August 26, 2011
    ...” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed.Cir.2009) (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964)). “The burden of proving damages falls on the patentee.” Id. “A reasonable royalty can be calculated f......
  • Stryker Corp. v. Intermedics Orthopedics, Inc., No. CV 90-3006 (ADS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • July 11, 1995
    ...regard to the question whether the defendant has gained or lost by its unlawful acts." Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526, 1543, 12 L.Ed.2d 457 (1964) (internal quotations and citations omitted). Through Section 284, "Congress sought to ensure ......
  • Brooktree Corp. v. Advanced Micro Devices, Inc., Nos. 91-1258
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • October 9, 1992
    ...wrong, what would have been the financial position of the person wronged? See Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526, 1543, 12 L.Ed.2d 457, 141 USPQ 681, 694 (1964) ("had the infringer not infringed, what would [the patentee] have made?").......
  • Request a trial to view additional results
418 cases
  • Dow Chemical Co. v. Mee Industries, No. 6:00CV437-ORL-31DAB.
    • United States
    • United States District Courts. 11th Circuit. United States District Court of Middle District of Florida
    • September 19, 2002
    ...the patent which proscribes that use. Hewlett-Packard Co., 909 F.2d at 1469 n. 4 (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964)). In order to establish contributory infringement, knowledge (but not the intent) that someone's ......
  • Lighting Ballast Control, LLC v. Philips Electronics North America Corp., Civil Action No. 7:09–CV–29–O.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • August 26, 2011
    ...” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed.Cir.2009) (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964)). “The burden of proving damages falls on the patentee.” Id. “A reasonable royalty can be calculated f......
  • Stryker Corp. v. Intermedics Orthopedics, Inc., No. CV 90-3006 (ADS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • July 11, 1995
    ...regard to the question whether the defendant has gained or lost by its unlawful acts." Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526, 1543, 12 L.Ed.2d 457 (1964) (internal quotations and citations omitted). Through Section 284, "Congress sought to ensure ......
  • Brooktree Corp. v. Advanced Micro Devices, Inc., Nos. 91-1258
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • October 9, 1992
    ...wrong, what would have been the financial position of the person wronged? See Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526, 1543, 12 L.Ed.2d 457, 141 USPQ 681, 694 (1964) ("had the infringer not infringed, what would [the patentee] have made?").......
  • Request a trial to view additional results
2 books & journal articles
  • INFRINGEMENT, UNBOUND.
    • United States
    • Harvard Journal of Law & Technology Vol. 32 Nbr. 1, September 2018
    • September 22, 2018
    ...patents and arguing for the type of boundary loosening explored in this article). (30.) Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964) ("[Section] 271 (c) does require a showing that the alleged contributory infringer knew that the combination for which his compon......
  • Roger Blair and Intellectual Property
    • United States
    • Antitrust Bulletin Nbr. 61-3, September 2016
    • September 1, 2016
    ...Analysis of DamagesRules in Intellectual Property Cases,supra note 2.14. Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476, 503–7 (1964).15. Dam, supra note 7.16. 547 U.S. 388 (2006).Hylton This analysis of remedies is representative of the typically solid and informati......

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