FMC Corp. v. Up-Right, Inc.

• Decision Date: 06 April 1994
• Docket Number: UP-RIGH,No. 93-1272,INC,93-1272
• Citation: 21 F.3d 1073,30 USPQ2d 1361
• Parties: FMC CORPORATION, Plaintiff-Appellant, v.and American Grape Harvesters, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1073

21 F.3d 1073

30 U.S.P.Q.2d 1361

FMC CORPORATION, Plaintiff-Appellant, v. UP-RIGHT, INC. and American Grape Harvesters, Inc. Defendants-Appellees.

No. 93-1272.

United States Court of Appeals Federal Circuit.

April 6, 1994.

Raymond P. Niro, Niro, Scavone, Haller & Niro, Chicago, IL, argued for plaintiff-appellant. With him on the brief, was Raymond P. Niro, Jr. Also on the brief, was Richard B. Megley, FMC Corporation, Chicago, IL. Of counsel was, Timothy B. Dyk, Washington, DC.

Bruce H. Johnsonbaugh, Eckhoff, Hoppe, Slick, Mitchell & Anderson, San Francisco, CA, argued, for defendants-appellees. With him on the brief, were James F. Mitchell and Ernest M. Anderson.

Before RICH, MICHEL, and CLEVENGER, Circuit Judges.

RICH, Circuit Judge.

FMC Corporation (FMC) ¹ appeals the February 22, 1993, decision of the United States District Court for the Northern District of California, FMC Corp. v. Up-Right, Inc., 816 F.Supp. 1455, 28 USPQ2d 1103 (N.D.Cal.1993), holding that Up-Right, Inc. (Up-Right) did not contributorily infringe claim 1 of U.S. Patent No. 4,286,426 (Orlando patent), owned by FMC, through its sale of replacement parts for picking heads which are components of grape harvesters covered by claim 1. For the reasons hereinafter stated, we hold that replacement of the worn-out parts in the picking heads at issue in this case did not constitute impermissible reconstruction of the patented grape harvesters, and therefore there was no direct infringement, and thus no contributory infringement; wherefore, we affirm.

I. Background

A grape harvester is a vehicle which drives along rows of grape vines and shakes the vines to dislodge grapes. The portion of a grape harvester which comes in contact with the vines is referred to as a picking head. Fig. 1 of the Orlando patent, which illustrates a grape harvester in operation, is set forth below together with Fig. 3, which illustrates a picking head in more detail:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Claim 1 of the Orlando patent, with the numerals in brackets referring to elements illustrated in Figs. 1 and 3, reads as follows:

In a harvesting apparatus that includes a vehicle movable to a position adjacent to the plant to be harvested, said vehicle including a support frame , a shaker assembly mounted to said vehicle support frame for shaking the trunk of a plant to dislodge crops therefrom comprising: a shaker frame , means connected to said support frame for mounting said shaker frame for pivoting about a single axis that is overhead the plant to be shaken, said shaker frame including first and second frame sections [34, 36] that extend downwardly of said axis of rotation in substantially fixed relation to each other and that terminate in outer ends, striker members [48, 48'] connected to said outer ends in opposing relation, and drive means [includes, inter alia, 58, 68, 85a, 86, 87a, 88, 89, 92] separate and distinct from said striker members and being connected thereto only through said shaker frame for oscillating said shaker frame as a single unit about said axis to cause said striker members to alternately impact the opposite sides of the trunk of said plant, said drive means being connected to said striker frame at a height situated generally above said plant.

Prior to June 1, 1990, Up-Right manufactured and sold both grape harvesters and rotary pulsator picking heads for use therein, as well as replacement parts for both of these products. On June 1, Up-Right sold its harvester division, including all facilities and inventory, to American Grape. FMC does not sell grape harvesters; rather, FMC sells replacement picking heads for use in grape harvesters such as those previously sold by Up-Right.

There is no dispute that claim 1 reads on the grape harvesters that Up-Right sold prior to selling its harvester division to American Grape. It is also undisputed that the "shaker assembly" recited in claim 1 reads on the rotary pulsator picking heads found in Up-Right's harvesters.

At the conclusion of prior litigation between the parties, Up-Right was enjoined from further manufacturing its rotary pulsator picking heads. FMC Corp. v. Up-Right, Inc., No. 85 8370 WWS (N.D.Cal. Sept. 15, 1988). In addition, following the liability phase of that litigation, the parties entered into a settlement agreement in which Up-Right agreed not to "reconstruct" any of the rotary pulsator picking heads that it had sold as of settlement. At that time, Up-Right had sold 192 heads. ² In the decision on Following settlement, Up-Right did not sell or manufacture any new rotary pulsator picking heads. However, from the time of settlement until the sale of its harvester division, Up-Right did continue to manufacture and sell replacement parts for the existing 192 heads. ³ Based on these sales, FMC brought this suit alleging that Up-Right had contributed to the impermissible "reconstruction" of the 192 heads, and thus that Up-Right should be held to be a contributory infringer of claim 1 of the Orlando patent pursuant to 35 U.S.C. Sec. 271(c). ⁴ The district court disagreed, holding that the replacement of worn-out parts in the existing rotary pulsator picking heads constituted permissible repair of the patented grape harvesters, and thus that Up-Right's sale of replacement parts for those heads to the owners of those harvesters did not constitute contributory infringement. From that holding FMC appeals.

appeal, the district court found that, with one or two exceptions, those 192 heads were still in service at the time of its decision.

II. Analysis

The district court properly applied the governing law regarding contributory infringement and repair/reconstruction in rendering its decision, and we find no error in the district court's analysis justifying reversal.

A.

At the outset, we note the maxim espoused by the Supreme Court that "there can be no contributory infringement in the absence of a direct infringement." Aro Mfg. Co. v. Convertible Top Replacement Co., Inc., 365 U.S. 336, 341, 81 S.Ct. 599, 602, 5 L.Ed.2d 592 (1961). It necessarily follows that, for Up-Right's sale of replacement parts to owners of the 192 grape harvesters at issue in this case to have constituted contributory infringement, the use of the grape harvesters containing such replacement parts and/or those grape harvesters themselves must have constituted direct infringement. Clearly, that was not the case.

It is undisputed that the parts replaced in the rotary pulsator picking heads of the 192 grape harvesters at issue were either worn-out or broken. Indeed, the district court found that the replacement of these parts was due to frequent breakage or wear, ⁵ and FMC has never contended that any of these replacements were unnecessary. In FMC doesn't argue that any Rotary Pulsators have in fact ever reached a state where, assessing them as a whole, they have required replacement of a majority of their parts in order to be returned to service.

addition, the district court characterized FMC's arguments below as follows:

FMC, 816 F.Supp. at 1464, 28 USPQ2d at 1110. FMC does not argue to the contrary in this appeal, and therefore FMC effectively has conceded that each individual instance involving the replacement of one or more parts constituted required repair as opposed to reconstruction.

This case is therefore unquestionably governed by Aro. In Aro, the Supreme Court noted that the right to use a patented combination, which impliedly attaches upon the sale of a device or apparatus embodying that combination, includes the right to preserve the fitness of that combination for its intended use in so far as that fitness may be affected by wear or breakage. Aro, 365 U.S. at 345, 81 S.Ct. at 604. The Supreme Court accordingly held that the "maintenance of the 'use of the whole' of the patented combination through replacement of a spent, unpatented element does not constitute reconstruction." Id. Of particular relevance to this case, the Court also held:

reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to "in fact make a whole new article," after the entity, viewed as a whole, has become spent. In order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented device. Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property. [Citations omitted.]

Aro, 365 U.S. at 346, 81 S.Ct. at 604 (emphasis added).

FMC contended at trial that, although each individual servicing of the 192 heads may have constituted repair, a majority of the elements of the claimed combination were replaced in most or all of the 192 heads over a period of time, and that such a replacement was tantamount to reconstruction. FMC thus argued that the sequential replacement of broken or worn-out parts could, at some point, rise to the level of an impermissible reconstruction. The district court properly noted that such a proposition is directly contrary to the Supreme Court's pronouncement in Aro and accordingly found in favor of Up-Right.

As indicated in the preceding excerpt therefrom, the Supreme Court unequivocally held in Aro that the mere replacement of broken or worn-out parts, one at a time, whether of the same part repeatedly or of different parts successively, is no more than the...