Goodyear Shoe Machinery Co. v. Jackson

• Decision Date: 06 December 1901
• Docket Number: 392.
• Citation: 112 F. 146
• Parties: GOODYEAR SHOE MACHINERY CO. v. JACKSON et al.
• Court: U.S. Court of Appeals — First Circuit

112 F. 146

GOODYEAR SHOE MACHINERY CO. v. JACKSON et al.

No. 392.

United States Court of Appeals, First Circuit.

December 6, 1901

Benjamin Phillips (Elmer P. Howe, on the brief), for appellant.

Vere Goldthwaite, for appellees.

Before COLT and PUTNAM, Circuit Judges, and WEBB, District Judge.

COLT Circuit Judge.

There is presented on this appeal the single question of legitimate or illegitimate repair by the purchasers of a patented machine. The defendants, in rather a small way, were engaged in the business of general jobbing and repair work, and several purchasers sent their machines to the defendants' shop for repairs. In repairing the machines, the defendants made and replaced a number of parts, and the contention is that these repairs constituted an infringement of three of the complainant's patents for attachments to these machines.

It is admitted by counsel that the case stands the same as if the suit had been brought directly against the purchasers. This limits the issue strictly to the right of the purchasers to make these repairs, and eliminates any question of possible contributory infringement by the defendants by reason of making and selling parts of these machines.

But although the case stands the same as if suit had been brought directly against the purchasers, the complainant's brief and argument have proceeded largely upon the assumption that infringement by the purchaser of a patented machine is closely allied to contributory infringement, in that both kinds of infringement relate to making a part of a patented invention, as distinguished from making the whole; and this has led the complainant to base infringement mainly upon the circumstance that the purchasers, in repairing their machines, replaced one of the material elements of the patented combinations. The fact is, however, that the two kinds of infringement are fundamentally different.

Infringement is the unlawful making or selling or using of a patented invention. Contributory infringement is 'the intentional aiding of one person by another in the unlawful making or selling or using of the patented invention'; and this is usually done by making or selling a part of the patented invention with the intent and purpose of so aiding. The essence of contributory infringement lies in concerting or planning with others in an unlawful invasion of the patentee's rights. Howson, Contrib. Infringe. Pat. 1; Thomson-Houston Electric Co. v. Kelsey Electric Ry Specialty Co. (C.C.) 72 F. 1016; Thomson-Houston Electric Co. v. Ohio Brass Co. (C.C.) 78 F. 139; Wallace v. Holmes, 9 Blatchf. 65, Fed. Cas. No 17,100; Renwick v. Pond, 10 Blatchf. 39, Fed. Cas. No. 11,702; Saxe v. Hammond, 1 Ban.& A. 629, Fed. Cas. No. 12,411; Richardson v. Noyes, 2 Ban.& A. 398, Fed. Cas. No. 11,792; Schneider v. Pountney (C.C.) 21 F. 399; Travers v. Beyer (C.C.) 26 F. 450, 23 Blatchf. 423; Snyder v. Bunnell (C.C.) 29 F. 47; Celluloid Mfg. Co. v. American Zylonite Co. (C.C.) 30 F. 437; Singer Mfg. Co. v. Springfield Foundry Co. (C.C.) 34 F. 393; Schneider v. Missouri Glass Co. (C.C.) 36 F. 582; Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., 25 C.C.A. 267, 77 F. 288, 35 L.R.A. 728.

Infringement by the purchaser of a patented machine consists in the substantial rebuilding of such machine. A contributory infringer necessarily only makes or sells a part of the patented invention. The purchaser of a patented machine, in order to infringe, must make or reproduce, in substance, the whole patented invention. To prove infringement, in one case, it is only necessary to show a partial infringement in aid of an unlawful complete infringement, while in the other case a substantially full and complete infringement must be established. The rule that a person may be guilty of contributory infringement by making or selling a material element of the patented combination has no application to infringement by the purchaser of a machine embodying such patented combination. A purchaser stands in no different position from an ordinary infringer, except in the circumstance that he has bought a patented machine, and, consequently, his infringement does not consist in the construction of a wholly new machine, but in the reconstruction of such machine after it is worn out or substantially destroyed. The essence of the infringement is the same in both cases.

The ordinary infringer makes the entire patented machine; the infringing purchaser begins with what remains of the patented machine, and rebuilds it. To show infringement in the case of an ordinary infringer, where the patented invention comprises several elements in combination, it is necessary to prove that the alleged infringing machine contains all the elements (or their equivalents) which make up the combination, although some of the elements may not be material, or of the essence of the invention. To show infringement by the purchaser in such a case, the same strictness of proof is not required, for the reason that it may not be worn out or destroyed in his machine when the work of reconstruction begins. A practical reconstruction of the patented machine, and not necessarily a literal reconstruction of the patented combination, is all that is required to constitute infringement by the purchaser. For example, where the patent is for an improved lamp, and the whole invention resides in the burner, but the claim is for the combination of the burner and a chimney, in an ordinary suit for infringement it must be shown that the defendant made or used or sold the patented combination, namely, the burner and chimney; while in a suit for infringement against a purchaser of the lamp it would only be necessary to prove that he replaced the old burner with a new one, because, manifestly, that would constitute a substantial reconstruction of the patented invention. If a person other than the purchaser should make or sell the burner with the intent and purpose of its use by another in combination with the chimney, it would be a clear case of contributory infringement. Wallace v. Holmes, 9 Blatchf. 65, Fed. Cas. No. 17,100.

In approaching the question of infringement by the purchaser of a patented machine, it is important to bear in mind what the patentee sold and the purchaser bought. The patentee has parted with his machine and the monopoly that goes with it, and the purchaser has bought the machine with the right to use the patented invention until the machine is worn out or destroyed. When the machine is worn out, or substantially destroyed, his right to use the patented invention ceases; and when he rebuilds his machine, and thereby makes substantially a new machine, it becomes subject to the patentee's monopoly, the same as in the case of any other person who unlawfully makes the patented machine. When the patented machine has passed outside the monopoly by a sale and purchase, the patentee has no right to impose any restrictions on its use for his own benefit. He cannot forbid the further use of the machine because it is out of repair in consequence of the wearing out or breaking of some of its parts, and so oblige the purchaser to buy a new machine. The purchased machine has become the individual property of the purchaser, and is like any other piece of property which he owns. He may sell it, or he may use it so long as its usefulness lasts, and then throw it away, or dispose of it for junk. He may prolong its life and usefulness by repairs more or less extensive, so long as its original identity is not lost. He is only prohibited from constructing a substantially new machine. He cannot, under the pretext of repairs, build another machine. Wilson v. Simpson, 9 How. 109, 13 L.Ed. 66; Adams v. Burks, 17 Wall, 453, 21 L.Ed. 700; Chaffee v. Belting Co., 22 How. 217, 223, 15 L.Ed. 240; Mitchell v. Hawley, 16 Wall. 544, 546, 547, 21 L.Ed. 322; Hobbie v. Jennison, 149 U.S. 355, 363, 13 Sup.Ct. 879, 37 L.Ed.766; Cotton-Tie Co. v. Simmons, 106 U.S. 89, 1 Sup.Ct. 52, 27 L.Ed. 79; Aiken v. Print Works, 2 Cliff. 435, Fed. Cas. No. 113; Morgan Envelope Co. v. Albany Paper Co., 152 U.S. 425, 435, 14 Sup.Ct. 627, 38 L.Ed. 500; Gottfried v. Brewing Co., 5 Ban.& A. 5, Fed. Cas. No. 5,633; Davis Electrical Works v. Edison Electric Light Co., 8 C.C.A. 615, 60 F. 276; Id. (C.C.) 58 F. 878.

A purchaser, then, may repair, but not reconstruct or reproduce, the patented device or machine. Repair is 'restoration to a sound, good, or complete state after decay, injury, dilapidation, or partial destruction. ' Reconstruction is 'the act of constructing again.' Reproduction is 'repetition,' or 'the act of reproducing.' These definitions are instructive in bringing home to the mind that repair carries with it the idea of restoration after decay, injury, or partial destruction, and that reconstruction or reproduction carries with it the idea of a complete construction or production over again.

But the difficult question still remains, what is legitimate repair, and what is reconstruction or reproduction as applied to a particular patented device or machine? When does repair destroy the identity of such device or machine and encroach upon invention? At what point does the legitimate repair of such device or machine end, and illegitimate reconstruction begin?

It is impracticable, as well as unwise, to attempt to lay down any rule on this subject, owing to the number and infinite variety of patented inventions. Each case, as it arises, must be decided in the light of all the facts and circumstances presented, and with an intelligent comprehension of the scope, nature, and purpose of the patented invention, and the fair and reasonable intention of the parties. Having clearly in mind the specification and claims of the patent, together with the condition of...