Aro Mfg. Co. v. Convertible Top Replacement Co., 5488.

• Citation: 270 F.2d 200
• Decision Date: 31 August 1959
• Docket Number: No. 5488.,5488.
• Parties: ARO MANUFACTURING CO., Inc., et al., Defendants, Appellants, v. CONVERTIBLE TOP REPLACEMENT CO., Inc., Plaintiff, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (1st Circuit)

270 F.2d 200 (1959)

ARO MANUFACTURING CO., Inc., et al., Defendants, Appellants, v. CONVERTIBLE TOP REPLACEMENT CO., Inc., Plaintiff, Appellee.

No. 5488.

United States Court of Appeals First Circuit.

Heard June 4, 1959.

Decided August 31, 1959.

Rehearing Denied September 15, 1959.

David Wolf and Charles Hieken, Boston, Mass., Ezekiel Wolf, Wolf & Greenfield, Boston, Mass., on the brief, for appellants.

Elliott I. Pollock, Washington, D. C., Paul V. Power, Boston, Mass., on the brief, for appellee.

Before MAGRUDER, Chief Judge, and WOODBURY and HARTIGAN, Circuit Judges.

WOODBURY, Chief Judge.

This is an appeal from an interlocutory judgment ordering, adjudging and decreeing that claims 3, 4, 5, 7, 8, 9 and 10 of United States Patent No. 2,569,724, issued on October 2, 1951, to Harry A. Mackie and Stanley Duluk for "Convertible Folding Top with Automatic Seal at Rear Quarter" are valid and have been infringed by the defendants, that the defendants, their officers, agents and servants be enjoined from further infringement, and that the question of the plaintiff's damages for past infringement be referred to a Master.

The plaintiff-appellee, Convertible Top Replacement Co., Inc., is the possessor by territorial grant of the right, title and interest in and to the Mackie-Duluk patent in and for the Commonwealth of Massachusetts together with all rights of action accruing since December 30, 1953, for infringement thereof in the Commonwealth. The defendants manufacture and sell, for replacement purposes only, the fabric portions of convertible tops which they either install themselves or sell pre-fabricated for installation by trimmers, that is to say, persons engaged in the business of putting on new tops, repairing upholstery etc., and, to an insignificant extent, to do-it-yourself car owners. The defendants' tops are custom-designed by make of car and year of manufacture to permit accurate replacements on all standard cars manufactured in the United States and are so advertised. They pre-fabricate and keep in stock the fabric parts only of convertible tops for various models of cars manufactured by the Ford Motor Company from 1952 to 1955, and for many models of General Motors cars manufactured for the years 1950 to 1954, when many convertible automobiles produced by those two manufacturers were equipped with Mackie-Duluk tops.

The District Court resolved the issue of the validity of the claims of the Mackie-Duluk patent in suit in favor of the plaintiff. It 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." On this appeal, however, the question of validity has hardly been argued at all and we are not at all sure that all the evidence on that issue has been included in the parts of the record printed in the joint record appendix before us. Under these circumstances we can only take the validity of the patent claims in suit for granted and turn immediately to the hotly contested issue of infringement.

The basic question argued before us on this appeal is whether the defendants, by manufacturing and selling replacement convertible top fabrics cut to fit and adapted for use in the combination of elements covered by the plaintiff's patent, are guilty of contributory infringement as defined in Title 35 U.S.C. § 271(c), or whether, in doing what they did, they merely were making a permissible replacement of a part which expectedly became worn out or defective sooner than other parts of the patented combination.

In addressing ourselves to this question we turn first to the patent in suit and its prior art.

Folding tops for vehicles consisting of bows of wood or metal covered with a flexible waterproof fabric (in the days of "The Deacon's Masterpiece; or, The Wonderful `One-Hoss Shay'"¹ with leather) 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 integral 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.

Claim 8 of the patent may be taken as typical of those in suit. It reads:

"In a convertible automobile body, the combination of a lower metal body structure or tonneau having a body panel, a folding bow structure supported by the tonneau and having flexible top material supported by the bows and having the top material at the rear quarter extending down, a rain trough secured to the bottom of said flexible top material and to said panel on the inside and below the top of the metal body or tonneau, said flexible top material spreading and adjoining the inside of the top of the side of the tonneau when the bow structure is raised, and a wiping arm secured to a part of the movable bow structure and acting simultaneously with said bow structure to engage the inside lower portion of the top material in raising the top to press the two adjoining members toward each other and thereby produce a weather seal therebetween."

The defendants, as we have said, manufacture and sell only the fabric part of the convertible top structure. And from this they argue at length that, since fabric tops stretched over bows are admittedly very old in the...