Convertible Top Replacement Co. v. Aro Manufacturing Co., No. 5991

CourtU.S. Court of Appeals — First Circuit
Writing for the CourtWOODBURY, , and HARTIGAN and ALDRICH, Circuit
Citation312 F.2d 52
PartiesCONVERTIBLE TOP REPLACEMENT CO., Inc., Plaintiff, Appellant, v. ARO MANUFACTURING CO., Inc., et al., Defendants, Appellees. ARO MANUFACTURING CO., Inc., et al., Defendants, Appellants, v. CONVERTIBLE TOP REPLACEMENT CO., Inc., Plaintiff, Appellee.
Docket Number5993.,No. 5991
Decision Date01 April 1963

312 F.2d 52 (1962)

CONVERTIBLE TOP REPLACEMENT CO., Inc., Plaintiff, Appellant,
v.
ARO MANUFACTURING CO., Inc., et al., Defendants, Appellees.

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

Nos. 5991, 5993.

United States Court of Appeals First Circuit.

December 13, 1962.

Certiorari Granted April 1, 1963.


312 F.2d 53

Elliott I. Pollock, Washington, D. C., with whom Paul V. Power, Boston, Mass., was on brief, for Convertible Top Replacement Co., Inc.

Charles Hieken, Boston, Mass., with whom David Wolf and Ezekiel Wolf, Wolf & Greenfield, Boston, Mass., were on brief, for Aro Mfg. Co., Inc., et al.

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

Certiorari Granted April 1, 1963. See 83 S.Ct. 1015.

WOODBURY, Chief Judge.

Upon receipt of the mandate of the Supreme Court in Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc., 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961), the court below after hearings entered a judgment which, as amended, ordered, adjudged and decreed: (1) that by virtue of a territorial grant the plaintiff, Convertible Top Replacement Co., Inc., was possessed of the right, title and interest in the Mackie-Duluk patent No. 2,569,724 in the Commonwealth of Massachusetts, (2) that neither the corporate defendant, Aro Manufacturing Co., Inc., nor the individual defendants, either individually or as co-partners doing business as Aro Top Sales Company, had infringed claims 3, 4, 5, 7, 8, 9 and 10 of the above patent, (3) that the plaintiff's amended complaint be dismissed with costs to the defendant of $3,841.77 and (4) that the defendants' counterclaim for a declaratory judgment be dismissed without prejudice and without costs. In No. 5991 the plaintiff below as appellant here contends that this judgment is erroneous in that it fails to make any distinction between replacements of the fabric portions of convertible automobile tops for General Motors cars, which were licensed under the patent, and those for Ford cars, which were not, and in that it fails to order, adjudge and decree that the Mackie-Duluk patent is valid. In No. 5993 the defendants below as appellants here contend that the judgment is erroneous because it fails to award them such damages as they may be able to establish in future proceedings, plus attorney's fees, trebled, for antitrust law violation by the plaintiff. We shall consider the appeals in numerical order but to dispose of the respective contentions of the parties it will be helpful to review the judicial proceedings in this tortuous litigation.

It began in April, 1956, with a complaint, later amended, by Convertible Top Replacement Co., Inc., C.T.R. hereinafter, which charged the defendant, Aro Manufacturing Co., Inc., and its principal officers, hereinafter collectively Aro, with infringement and contributing to the infringement of U. S. 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" by making, selling and installing specially cut fabric tops for use in the patented structure. The defendants answered denying the basic allegations in the complaint, alleging patent misuse and specifically asserting that the patent is invalid and if valid not infringed. The defendants also filed a counterclaim for a declaratory judgment that the patent had been misused, that it was invalid and if valid not infringed. A defendant's motion for summary judgment based on affidavits and answers to interrogatories was denied and the case went to trial by the court sitting without a jury.

The district court after full hearing found that the plaintiff as assignee was entitled, by virtue of a territorial grant, to sue on the patent in Massachusetts, that the defendants had "clearly not made out" their claim that the plaintiff had misused its patent and that the defendants

312 F.2d 54
had not established their basic defense of invalidity.1

The court then turned to the question of infringement which it said had two aspects. Referring to the established fact that General Motors Corp. was licensed under the Mackie-Duluk patent while Ford Motor Co., was not, the court said: "As to the former, defendants are protected if their fabrics are to be regarded as mere repair, and not reconstruction. As to the latter, defendants have no protection against a claim for contributory infringement under § 271 (c) if they made a material part, with knowledge that it was to be used in a patented structure, which was not a staple article of commerce suitable for substantial non-infringing use." The court summarily disposed of the issue of infringement insofar as unlicensed Ford Motor Co. cars were concerned by finding that there was no substantial non-infringing use for fabric tops specially made by the defendants for the cars of that manufacturer having the Mackie-Duluk top structure, which fabrics, it said, "* * * are admittedly purposely designed for, and advertised for, Mackie-Duluk tops." The court gave more extended consideration to the question dispositive of the issue with respect to infringement by replacing the fabric part of convertible tops on licensed General Motors Corp. cars, i. e. whether such replacement constituted mere repair or major reconstruction.

Finding that replacing the fabric tops on cars of that manufacturer was "not permissive repair" the court entered an interlocutory judgment that the Mackie-Duluk patent was good and valid in law as to its claims 3, 4, 5, 7, 8, 9 and 10, that the defendants had infringed or contributorily infringed those claims with respect to both Ford and General Motors cars, that the defendants be enjoined from further infringement and that the question of the plaintiff's damages be referred to a master, with costs to the plaintiff.

On appeal this court affirmed, 270 F.2d 200 (1 Cir., 1959).

We took the validity of the Mackie-Duluk patent for granted for the reason that the issue of its validity had hardly been argued at all and because we were not even sure that all the evidence on that issue had been included in the parties' joint record appendix. Our attention at that time was directed primarily to the basic question argued before us by the appellants, that is, to the question whether replacing the fabric portion of the patented tops for convertible automobiles constituted a permissible repair of the patented structure or an impermissible reconstruction of it, upon the answer to which the issue of contributory infringement with respect to licensed General Motors cars depended. We did not specifically consider infringement with respect to unlicensed Ford Motor Co. cars for that question was not greatly stressed and we were convinced from the evidence that the court below was clearly correct in its conclusion that the defendants' custom made tops specifically designed and advertised for those cars constituted "a material part of the invention" and were not "a staple article of commerce suitable for substantial noninfringing use" within the meaning of 35 U.S.C. § 271(c). Nor did we specifically consider any question of possible patent misuse by the plaintiff-appellee, for, although the defendants-appellants argued patent misuse orally and in their brief, their statement of the questions involved pursuant to Rule 24(3) (b) of this court quoted in the margin2 did not set forth or necessarily suggest any such question.

312 F.2d 55
Moreover, no issue of patent misuse was presented by the pleadings insofar as printed in the parties' joint record appendix on that appeal. Allegations of misuse in the defendants' answer, and an allegation of misuse in their counterclaim were omitted from their answer and counterclaim as printed in the joint record appendix...

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2 practice notes
  • Aro Manufacturing Co v. Convertible Top Replacement Co, No. 75
    • United States
    • U.S. Supreme Court
    • June 8, 1964
    ...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 car......
  • Dopp v. HTP Corp., Nos. 91-1187
    • United States
    • United States Courts of Appeals. United States Court of Appeals (1st Circuit)
    • August 1, 1991
    ...192 (10th Cir.1966) (reversing award of relief to defendant on counterclaim not pleaded); Convertible Top Replacement Co. v. Aro Mfg. Co., 312 F.2d 52, 58 (1st Cir.1962) (allegation of misuse of patent in counterclaim comprised insufficient basis for award of damages to prevailing defendant......
2 cases
  • Aro Manufacturing Co v. Convertible Top Replacement Co, No. 75
    • United States
    • U.S. Supreme Court
    • June 8, 1964
    ...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 car......
  • Dopp v. HTP Corp., Nos. 91-1187
    • United States
    • United States Courts of Appeals. United States Court of Appeals (1st Circuit)
    • August 1, 1991
    ...192 (10th Cir.1966) (reversing award of relief to defendant on counterclaim not pleaded); Convertible Top Replacement Co. v. Aro Mfg. Co., 312 F.2d 52, 58 (1st Cir.1962) (allegation of misuse of patent in counterclaim comprised insufficient basis for award of damages to prevailing defendant......

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