Wells Mfg. Corp. v. Littelfuse, Inc.
| Decision Date | 17 November 1976 |
| Docket Number | No. 76-1087,76-1087 |
| Citation | 192 USPQ 256,547 F.2d 346 |
| Parties | WELLS MFG. CORP., a Wisconsin Corporation, Plaintiff-Appellee, v. LITTELFUSE, INC., a Texas Corporation, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Russell E. Hattis, Chicago, Ill., Ira Milton Jones, Milwaukee, Wis., for defendant-appellant.
Andrew O. Riteris, Milwaukee, Wis., for plaintiff-appellee.
Before SPRECHER and WOOD, Circuit Judges, and GRANT, * Senior District Judge.
In this patent case, Plaintiff-Appellee Wells Mfg. Corp. (hereinafter referred to as "Wells") brought suit against Defendant-Appellant Littelfuse, Inc. (hereinafter referred to as "Littelfuse") for a declaratory judgment that a patent owned by Littelfuse is not being contributorily infringed 1 by Wells' sale of certain brake switches. No question concerning the validity of the patent is raised on appeal. The sole issue on appeal is whether the manufacture and sale by Wells of replacement brake switches in the aftermarket constitutes permissible "repairs" of appellant's patented structure and therefore does not constitute contributory infringement or whether such sales result in the "reconstruction" of the patented structure and thereby constitutes contributory infringement.
The district court granted Wells' Motion for Summary Judgment and entered a declaratory judgment that the replacement of brake switches constituted permissible "repair."
For the following reasons, this court agrees with the lower court's holding and believes that the judgment on behalf of Wells should be affirmed.
Briefly, the facts are as follows.
The patentee of the patent in suit, United States Patent No. 3,257,522, is Andrew F. Raab. Application for the patent (hereinafter referred to as the "Raab patent") was filed August 9, 1962, and the patent was issued on June 21, 1966. Assignment of the patent by Raab to Littelfuse was recorded in the Patent Office on September 9, 1965. The parties have agreed by stipulation that only claim 1 is in issue. (Stipulation 1.)
Briefly, claim 1 of the Raab patent 2 describes a mechanism for illuminating the stoplight on the rear of an automobile when the driver applies the brakes. In order to understand the patent in greater detail, a brief description of the braking system of an automobile is first necessary.
Automobiles are conventionally provided with a brake mechanism such as a power brake mechanism or a mechanically operated hydraulic brake mechanism. The brake mechanism is activated by the driver of the automobile when he depresses the brake pedal. Connected respectively to the brake pedal and brake mechanism are a pair of telescoping link members having normally separate but engageable surfaces. The surfaces of the link members are engaged and the brake mechanism is thereby activated when the member connected to the brake pedal is moved at least a predetermined distance by depression of the brake pedal by the driver of the automobile.
As indicated above, claim 1 describes a device for the illumination of stoplights on the rear of a car only when the brake pedal is depressed with sufficient force to activate the brake mechanism. This is accomplished under the terms of claim 1 as follows: A normally open switch is carried on the exterior of one of the link members. A switch actuator is carried on the exterior of the other link member. A spring is connected between the link members for normally separating the engageable surfaces of the members and allowing the switch to remain in an open position. The spring has sufficient strength to prevent engagement of the engageable surfaces of the link members until pressure equivalent to the predetermined pressure required to activate the brake mechanism is applied by the brake pedal. When the brake pedal is depressed sufficiently to overcome the spring, the telescoping members are moved to engage the engageable surfaces causing the switch to close, whereupon substantially simultaneous operation of the brake mechanism and illumination of the stoplight occurs.
Littelfuse manufactures and sells brake switches which include the following elements described in claim 1: A normally open switch carried on the exterior of a link member; a switch actuator carried on the exterior of the other link member; and a spring connected between the link members. Littelfuse sells brake switches as original equipment to Ford Motor Company and American Motors Corporation. Littelfuse also sells brake switches as replacement parts in the aftermarket to distributors and dealers of automotive replacement parts for use in Ford and American Motors automobiles.
Wells manufactures and sells brake switches as replacement parts for Ford automobiles. 3 The Wells brake switch contains the same three elements with the identical relationship to the link members as are included in the Littelfuse switch. The parties stipulated in part that:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
. . . the three . . . elements of the Wells brake switch function in an identical manner to the three corresponding elements recited in claim 1 of the Raab patent, and that the other elements referred to in the preamble are not supplied by Wells at any time and at times remain as original equipment on the Ford automobile when the commercial Littelfuse brake switch is replaced by the Wells brake switch. (Stipulation 4.)
The district court granted Wells' Motion for Summary Judgment and held that the Raab patent was not contributorily infringed by Wells' manufacture and sale of brake switches. The district court ruled that claim 1 is a combination claim in which the arrangement, relationship, and cooperation of the switch, its actuator, and the spring with the telescoping linkage is the improvement. Thus, the district court reasoned that the brake switch manufactured by Wells is a separate unpatented element of a combination patent which includes the link as well as the switch. Under the doctrine of Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961), the Court concluded that replacement of the brake switch alone is permissible "repair" rather than an infringing reconstruction.
Littelfuse contends that the district court was in error in failing to find that manufacture and sale by Wells of its brake switch constituted contributory infringement of claim 1. Littelfuse argues that the district court improperly treated the telescoping link members recited in the preamble portion of claim 1 as part of the combination of patented elements. Littelfuse further asserts that claim 1 must be interpreted in light of the amendment history of the patent. According to Littelfuse, the file wrapper (Stipulation Exhibit 4) demonstrates that the Patent Office, after a series of claim amendments, granted claim 1 with the understanding that the brake switch per se was the patentable improvement and that the other elements referred to were merely old or environmental elements. In support of its position, Littelfuse cites the fact that the claim was written as a Jepson type claim with the environmental or old elements separated from the patentable portion of the claim. Since the movable link members were placed in the preamble of claim 1 in response to an objection by the Patent Office examiner, Littelfuse asserts that the link members are environmental elements only. Littelfuse further asserts that the recital of relationships between the elements of the brake switch to the link members does not convert the link members into part of the patented claim. Thus, according to Littelfuse, the brake switch manufactured and sold by Wells constitutes the entire patented entity. Under the doctrine of Aro Mfg. Co., supra, Littelfuse contends that Wells is guilty of contributory infringement.
Wells argues in response that the patented combination includes a unique or novel relationship between the switch, switch actuator, and spring and the link members. Wells relies upon 37 C.F.R. § 1.75(e), 4 to further support the proposition that the link members are part of the patented combination. Wells asserts that since under 37 C.F.R. § 1.75(e) the relationship of the elements of the brake switch to the link members is enumerated in the improvement portion of claim 1, the link members form part of the patented combination. Wells contends that the amendment history and the specification of claim 1 support this position. Since it manufactures and sells only the brake switch and not the link members, Wells argues that replacement of the brake switch in the aftermarket constitutes permissible "repair" under the rule of Aro Mfg. Co.
It is useful to first examine the meaning underlying the distinction between "repair" and "reconstruction" for a combination patent. 5 As the Court stated in Wilbur-Ellis Co. v. Kuther, 377 U.S. 422, 424, 84 S.Ct. 1561, 1563, 12 L.Ed.2d 419 (1964):
. . . The idea of "reconstruction" in this context has the special connotation of those acts which would impinge on the patentee's right "to exclude others from making," 35 U.S.C. § 154, the article. As stated in Wilson v. Simpson, 9 How. 109, 123, (13 L.Ed. 66), On the other hand, "When the wearing or injury is partial, then repair is restoration, and not reconstruction." Ibid. Replacing worn-out cutting knives in a planing machine was held to be "repair," not "reconstruction," in Wilson v. Simpson, supra. Our latest case was Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, (81 S.Ct. 599, 5 L.Ed.2d 592), which a majority of the Court construe as holding that it was not infringement to replace the worn-out fabric of a...
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