LAITRAM CORPORATION v. Deepsouth Packing Co.

• Decision Date: 26 May 1971
• Docket Number: No. 29776.,29776.
• Citation: 443 F.2d 936
• Parties: The LAITRAM CORPORATION, Plaintiff-Appellant, v. DEEPSOUTH PACKING CO., Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

443 F.2d 936 (1971)

The LAITRAM CORPORATION, Plaintiff-Appellant, v. DEEPSOUTH PACKING CO., Inc., Defendant-Appellee.

No. 29776.

United States Court of Appeals, Fifth Circuit.

May 26, 1971.

Louis B. Claverie, New Orleans, La., Guy W. Shoup, New York City, for appellant.

Paul L. O'Brien, Washington, D. C., C. Emmett Pugh, New Orleans, La., Pugh & Laiche, New Orleans, La., of counsel, for appellee.

Before JOHN R. BROWN, Chief Judge, and GOLDBERG and CLARK, Circuit Judges.

CLARK, Circuit Judge:

We have held this day in a companion case, Laitram Corp. v. Deepsouth Packing Co., Inc., 443 F.2d 928, that the district court was correct in determining that Laitram's patents were valid, and that Deepsouth had infringed Claim 3 of the '218 patent and Claim 1 of the '927 patent. Our present problem is to decide whether Deepsouth may sell its infringing machine in foreign markets when it produces all essential parts of the machine in the United States but ships it in a form which contemplates minor final assembly in such foreign markets. We hold it may not.

35 U.S.C.A. § 271(a) proscribes the unauthorized making of any patented invention within the United States.¹ Therefore, our specific task is to determine the meaning and scope of the word "makes" in § 271(a) within the context of this litigation. The district court, after enjoining Deepsouth from further infringing Laitram's patents, ruled that the infringing machine was not "made" in the United States, if not assembled in final operable condition prior to export, and accordingly modified its injunction order to permit sale abroad where the machinery was not put into operable condition in the United States.

It is undisputed that all the parts for the deveiner are produced in the United States. Not all of the parts, however, are assembed together in the United States into a complete working machine. In particular, the razor blades and the water header are not attached to the trough in the slitter and the fingernail belt is not placed in the discharge conveyor. In addition, when the machine is shipped, the razor blades, water header and trough are placed in three different crates, and the fingernail belt is crated separately from the discharge conveyor. Mr. Skrmetta, president of Deepsouth, admitted, however, that the machine could be assembled in less than an hour once it arrived overseas. His frank description of his situation to a foreign customer was this:

"We are handicapped by a decision against us in the United States. This was a very technical decision and we can manufacture the entire machine without any complication in the United States, with the exception that there are two parts that must not be assembled in the United States, but assembled after the machine arrives in Brazil. This assembly will take less than one hour."

The issue in this case appears to be one of first impression in this Circuit and has only been decided in three other circuits. See Radio Corp. of America v. Andrea, 79 F.2d 626 (2nd Cir. 1935); Cold Metal Process Co. v. United Engineering & Foundry Co., 235 F.2d 224 (3rd Cir. 1956); Hewitt-Robins, Inc. v. Link Belt Co., 371 F.2d 225 (7th Cir. 1966). It should be noted that the last two decisions did nothing more than follow Andrea. The district judge, 310 F. Supp. 926, was clearly correct in determining that these cases stand for the proposition that a machine is not made in the United States until it is in fully assembled form. What he could not know is that we would refuse to follow them.

To see how the courts have worked themselves into what we perceive to be a conceptual box, one must begin with the rule that a patent protects only the machine in its totality and not its individual unassembled elements. Brown v. Guild, 23 Wall. 181, 90 U.S. 181, 23 L. Ed. 161 (1874); Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961); Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., 320 U.S. 680, 64 S.Ct. 278, 88 L.Ed. 396 (1943). From this well-known rule, the other circuits have reasoned that since the patent is on the whole and not merely on the parts, the protection of the patent laws is not extended until the machine is complete. Since the machine was not completed within the United States, there can literally be no infringement. "No wrong is done the patentee until the combination is formed." Radio Corp. of America v. Andrea, supra, 79 F.2d at 628.

We reject this reasoning. The word "makes" should not be given an artificial, technical construction but should be accorded a construction in keeping with the ordinary meaning of that term.

The fact situation in Andrea well illustrates the point. This case involved an injunction suit against an accused infringer of radio sets. It was undisputed that all the parts of the radio were manufactured in the United States, but to make the sets operational one had to perform the simple process of inserting vacuum tubes into sockets and then plugging the radio into a wall socket. These acts were performed overseas, but it...