Deepsouth Packing Co v. Laitram Corporation 8212 315, 71

• Court: United States Supreme Court
• Citation: 92 S.Ct. 1700,32 L.Ed.2d 273,406 U.S. 518,173 USPQ 769
• Docket Number: No. 71,71
• Parties: DEEPSOUTH PACKING CO., Inc., Petitioner, v. The LAITRAM CORPORATION. —315
• Decision Date: 30 May 1972

406 U.S. 518

92 S.Ct. 1700

32 L.Ed.2d 273

DEEPSOUTH PACKING CO., Inc., Petitioner,

v The LAITRAM CORPORATION.

No. 71—315.

Argued April 11, 1972.

Decided May 30, 1972.

Syllabus

Petitioner is not foreclosed by 35 U.S.C. § 271(a), which proscribes the unauthorized making of any patented invention within the United States, from making the parts of shrimp deveining machines (for which respondent was adjudged to have valid combination patents) to sell to foreign buyers for assembly by the buyers for use abroad. The word 'makes' as used in § 271(a) does not extend to the manufacture of the constituent parts of a combination machine, and the unassembled export of the elements of an invention does not infringe the patent. Radio Corp. of America v. Andrea, 79 F.2d 626. Pp. 519—532.

443 F.2d 936, reversed and remanded.

Harold J. Birch, Washington, D.C., for petitioner.

Guy W. Shoup, New York City, for respondent.

Mr. Justice WHITE delivered the opinion of the Court.

The United States District Court for the Eastern District of Louisiana has written:

'Shrimp, whether boiled, broiled, barbecued or fried, are a gustatory delight, but they did not evolve to satisfy man's palate. Like other crustaceans, they wear their skeletons outside their bodies in order to shield their savory pink and white flesh against predators, including man. They also carry their intestines, commonly called veins, in bags (or sand bags) that run the length of their bodies. For shrimp to be edible, it is necessary to remove their shells. In addition, if the vein is removed, shrimp become more pleasing to the fastidious as well as more palatable.'¹

favored federal courts blissfully situated on the Nation's Gulf Coast, but they are properly recited in this case. Petitioner and respondent both hold patents on machines that devein shrimp more cheaply and efficiently than competing machinery or hand labor can do the job. Extensive litigation below has established that respondent, the Laitram Corp., has the superior claim and that the distribution and use of petitioner Deepsouth's machinery in this country should be enjoined to prevent infringement of Laitram's patents. Laitram Corp. v. Deepsouth Packing Co., 443 F.2d 928 (C.A.5 1971). We granted certiorari, 404 U.S. 1037, 92 S.Ct. 702, 30 L.Ed.2d 728 (1972), to consider a related question: Is Deepsouth, barred from the American market by Laitram's patents, also foreclosed by the patent laws from exporting its deveiners, in less than fully assembled form, for use abroad?

I

A rudimentary understanding of the patents in dispute is a prerequisite to comprehending the legal issue presented. The District Court determined that the Laitram Corp. held two valid patents for machin- ery used in the process of deveining shrimp. One, granted in 1954,² accorded Laitram rights over a 'slitter' which exposed the veins of shrimp by using water pressure and gravity to force the shrimp down an inclined through studded with razor blades. As the shrimp descend through the trough their backs are slit by the blades or other knife-like objects arranged in a zig-zag pattern. The second patent, granted in 1958, covers a 'tumbler,' 'a device to mechanically remove substantially all veins from shrimp whose backs have previously been slit,' App. 127, by the machines described in the 1954 patent. This invention uses streams of water to carry slit shrimp into and then out of a revolving drum fabricated from commercial sheet metal. As shrimp pass through the drum the hooked 'lips' of the punched metal, 'projecting at an acute angle from the supporting member and having a smooth rounded free edge for engaging beneath the vein of a shrimp and for wedging the vein between the lip and the supporting member,' App. 131, engage the veins and remove them.

Both the slitter and the tumbler are combination patents; that is,

'(n)one of the parts referred to are new, and none are claimed as new; nor is any portion of the combination less than the whole claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all, arranged and combined together in the manner described. And this combination, composed of all the parts mentioned in the specification, and arranged with reference to each other, and to other parts of the (machine) in the manner therein described, is stated to be the improvement, and is the thing patented.' Prouty v. Ruggles, 16 Pet. 336, 341, 10 L.Ed. 985 (1842).

The slitter's elements as recited in Laitram's patent claim were: an inclined trough, a 'knife' (actually, knives) positioned in the trough, and a means (water sprayed from jets) to move the shrimp down the trough. The tumbler's elements include a 'lip,' a 'support member,' and a 'means' (water thrust from jets). As is usual in combination patents, none of the elements in either of these patents were themselves patentable at the time of the patent, nor are they now. The means in both inventions, moving water, was and is, of course, commonplace. (It is not suggested that Deepsouth infringed Laitram's patents by its use of water jets.) The cutting instruments and inclined troughs used in slitters were and are commodities available for general use. The structure of the lip and support member in the tumbler were hardly novel: Laitram concedes that the inventors merely adapted punched metal sheets ordered from a commercial catalog in order to perfect their invention. The patents were warranted not by the novelty of their elements but by the novelty of the combination they represented. Invention was recognized because Laitram's assignors³ combined ordinary elements in an extraordinary way—a novel union of old means was designed to achieve new ends.⁴ Thus for both inventions 'the whole in some way exceed(ed) the sum of its parts.' Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950).

II

The lower court's decision that Laitram held valid combination patents entitled the corporation to the privileges bestowed by 35 U.S.C. § 154, the keystone provision of the patent code. '(F)or the term of seventeen years' from the date of the patent, Laitram had 'the right to exclude others from making, using, or selling the invention throughout the United States . . ..' The § 154 right in turn provides the basis for affording the patentee an injunction against direct, induced, and contributory infringement, 35 U.S.C. § 283, or an award of damages when such infringement has already occurred, 35 U.S.C. § 284. Infringement is defined by 35 U.S.C. § 271 in terms that follow those of § 154:

'(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, (directly) 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 infringe- ment of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.'

As a result of these provisions the judgment of Laitram's patent superiority forecloses Deepsouth and its customers from any future use (other than a use approved by Laitram or occurring after the Laitram patent has expired) of its deveiners 'throughout the United States.' The patent provisions taken in conjunction with the judgment below also entitle Laitram to the injunction it has received prohibiting Deepsouth from continuing to 'make' or, once made, to 'sell' deveiners 'throughout the United States.' Further, Laitram may recover damages for any past unauthorized use, sale, or making 'throughout the United States.' This much is not disputed.

But Deepsouth argues that it is not liable for every type of past sale and that a portion of its future business is salvageable. Section 154 and related provisions obviously are intended to grant a patentee a monopoly only over the United States market; they are not intended to grant a patentee the bonus of a favored position as a flagship company free of American competition in international commerce. Deepsouth, itself barred from using its deveining machines, or from inducing others to use them 'throughout the United States,' barred also from making and selling the machines in the United States, seeks to make the parts of deveining machines, to sell them to foreign buyers, and to have the buyers assemble the parts and use the machines abroad.⁵ Ac- cordingly, Deepsouth seeks judicial approval, expressed through a modification or interpretation of the injunction against it, for continuing its practice of shipping deveining equipment to foreign customers in three separate boxes, each containing only parts of the 1 3/4-ton machines, yet the whole assemblable in less than one hour.⁶ The company contends that by this means both the 'making' and the 'use' of the machines occur abroad and Laitram's lawful monopoly over the making and use of the machines throughout the United States is not infringed.

Laitram counters that this course of conduct is based upon a hypertechnical reading of the patent code that, if tolerated, will deprive it of its right to the fruits of the inventive genius of its assignors. 'The right to make can scarcely be made plainer by definition . . .,' Bauer v. O'Donnell, 229 U.S. 1, 10, 33 S.Ct. 616, 617, 57 L.Ed. 1041 (1913). Deepsouth in all respects save final assembly of the parts 'makes' the invention. It does so with the intent of having the foreign user effect the combination without Laitram's permission. Deepsouth sells these components as though they were the...