Aro Manufacturing Company, Inc. v. Convertible Top Replacement Company, Inc. – Oral Argument – October 13, 1960

Media for Aro Manufacturing Company, Inc. v. Convertible Top Replacement Company, Inc.

Audio Transcription for Oral Argument – October 17, 1960 in Aro Manufacturing Company, Inc. v. Convertible Top Replacement Company, Inc.

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Earl Warren:

Number 21, Aro Manufacturing Company, Incorporated, et al. versus Convertible Top Replacement Company, Incorporated.

Mr. Wolf.

David Wolf:

Mr. Chief Justice, may it please the Court.

This is a patent infringement suit brought by the respondent to get the petitioner for infringement of the Mackie-Duluk patent.

That was held valid and infringed by the District Court which also held contributorily infringed and no misuse was found.

The Court of Appeals affirmed the decision.

The Mackie-Duluk patent relates to a combination of elements in a convertible car construction.

The patent comprises the body of a car withholding both structures supported on the body of a car, a fabric on the bow structure extending down into the car and secured within the body of the car just below the bodyline.

A wiper arm supported on the holding bow mechanism is used to force the fabric ultimately against the body of the car in order to affect the watertight seal at the bodyline.

The patent relates specifically to the means for affecting this automatic seal at the bodyline of the car in order to prevent water from entering.

The fabric itself was cleaned in a combination of elements.

Every claim in the patent related to the combination of holding bow mechanism, the body of the car, the wiper on and the fabric in a specific operative relationship.

It was never claimed in the patent.

It was never claimed in the file — in the prosecution of patent to the fabric itself.

The combination was embodied in the General Motor Cars from 1950 to 1953 and at some models in 1954.It was also incorporated from 1952 to 1954 portion of the cars.

The fabric itself was the only wearable component of a patented combination.

The other elements were found to be relatively permanent and would normally last the life of the car.

The fabric would wear and would normally be replaced for every three years.

Because of the nature of the automotive industry, the automobile manufacturers were not interested in the replacement of these fabrics.

Consequently, they’re sizable replacement fabric industry in which these manufacturers make these fabrics for replacement purposes.

The petitioner in this case in Massachusetts Corporation and Partnership or perhaps the national leaders in this particular replacement field, they have been making these fabrics and selling them at kit form for installation for a number of years.

These kits are sold to distributors and jobbers who in turn install it.

All that is sold is the fabric for installation.

The kits include primarily the fabric especially designed to fit the General Motor and Ford cars.

The petition themselves except for incidental installation occasionally for test purposes in a very, very small amount of regular replacement don’t do any installations.

The respondent —

John M. Harlan II:

With this fabric that you described to us, this fabric, is it shaped?

David Wolf:

The fabric — the fabric is a — is — looks like any conventional fabric top for an automobile.

It has a flop or a prolongation at the sides which extend into the body of the car and it’s secured there by hinds on a truck so that when water comes down at the top of the car, if it isn’t stop behind the pressure of the wiper arm against the fabric and the body, it’ll be taken up to destruct and drain out.

But in answer to your question, the fabric itself was not, if I assume the question correctly, is not itself unique in shape.

David Wolf:

The record shows it was prior at which had this particular shape although not specifically the same dimensions.

The —

Potter Stewart:

Mr. Wolf, where in the — where in the appendix we’ll get the best picture (Inaudible) —

David Wolf:

Of the patent itself?

Potter Stewart:

Well, of this — of this top and of the shape of the top.

David Wolf:

The shape of the — well, the shape of the top is fashionably shown on page 589 and figure 1 of the patent.

I call to your attention that in figure 1 of the patent, only a portion of the entire fabric top is shown.

In other words, there was never a disclosure of a complete fabric top, only the fragmentary portion of it.

If the Court is interested in — in embodiment of an installation, there are several of them.

Perhaps he could look at page 531 which shows an exhibit looking from the inside of the car.

You can see that the flap is detached at the lower end there.

The bar going across just above the individual’s hand is that this wiper arm which form the part of the patent combination.

Potter Stewart:

Now, which direction are we looking at?

David Wolf:

We’re looking from the trunk of the car through the back window.

There — the — the respondent corporation is apparently a patentable incorporation that owns only a territorial right in this patent in the Commonwealth of Massachusetts.

It was organized approximately 22 days before the suit was brought.

It received a territorial assignment in the patent to Massachusetts only about 10 days before the suit was — was brought.

It received this assignment, this territorial assignment from another patent owning company called Automobile Body Research.

Automobile Body Research had a — had a companion patent to this particular patent.

Automobile Body also had a number of — well, had several licenses outstanding, had one with General Motors and one with the Ford Motor Company.

Both of these licenses call for payment of royalties on this unpatented fabric when it was — when they were sold as replacements.

And these — these royalties or the — the requirement of royalties was paid with — with a condition as long as the license was granted.

The fact that the — the petitioner in this case manufactures fabrics for replacement purposes brings, into a question, a well-known doctrine as to whether or not a user, and consequently a manufacturer, has the right to maintain and repair patented combination.

The Government is going to present use with respect to that particular issue.

As I understand the Government’s position is that a user, and consequently a supplier, of unpatented replacement fabrics has the right to make those replacements without payment of further royalties.

Once the patent owner has acquired or has received payments of the patented combination and once that original installations passed monopoly.

We’re primarily concerned with the question of whether or not the petitioner in this case has the right to sell fabrics for any purpose or whether the patent can be used for the purpose of controlling this unpatented fabric which was never claimed during the — at any time.

A patent defines an exception to the antitrust laws.

This exception is in particularly defined by the claims of the invention, by the claims which appeared at the end of the — the patent itself.

It’s long been held by this Court in many decisions starting with the Motion Picture patent case going down through Carbice — Carbice case and most recently with the Mercoid case, cannot use a patent to control the sale of unpatented component of that particular patented combination.

David Wolf:

Even though that particular patent component was an essential element and even though, in some instances, it was termed the heart of the invention.

The Congress recognizing importance of this particular requirement, the requirement of an inventor to find specific terms of what he claims his invention.

They did this by enacting a whole title, Title 35.

In this particular title, is the requirement of the inventor set forth in his application that which he claims his invention must be defined specifically and clearly, the examiners and the patent office will clearly — will look at the — this particular claim or these claims whatever is submitted and examine the file to determine whether or not this is an invention.

And the way they do it is they look at this particular claim or the claims above, they draw themselves a picture of what’s described.

And then they go and look through what — what’s defined queer eye.

In other words, this — this claim is a word picture of the invention.

Now, if the claim doesn’t describe a particular element, the patent examiners won’t look for it and that’s just what happened in this particular case.

The patent never looked for the fabric alone because it was never claimed.

The claims also served other functions.

They served the function in telling the public what they can make and what can’t make.

They also serve the function of telling the inventor what he can — what he use as a charge for infringement or what he can’t use as a charge of infringement.

Now, respondent in this particular case says, “Well, we don’t have to squabble with this claim because this fabric is an element of the patented combination and it’s an important element of patented combination.

Now, we can come in under the statute 35 U.S.C. which says, “If you make a material part of a patented combination and it’s not a staple or a commodity of commerce, we’re entitled to monopolize it.”

But let’s take a look at this 35 U.S.C. 271 — pardon me, 271 — 271 (c).

This appears on page 76 of our brief.

Now, the language paraphrasing it is whoever sells a component of a patented machine, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringement.”

Now, the keywords we believe in this particular statute are the phrases “material part” and also the phrase “suitable for substantial noninfringing use”.

Now, you can interpret the word “material part” to mean a single unpatented essential element with patented combination.

But the real question is, was this the purpose of that particular phrase?

If you look at the legislative history of 271 (c), it’s perfectly clear that Congress intended to codify existing case law.

271 (c) was not intended to make new law.

And in codifying prior existing case law, the Congress codified several cases.

Hugo L. Black:

When does it passed?

David Wolf:

July 4th, 1952.

Now, the cases —

Felix Frankfurter:

(Voice Overlap) the Patent Division Office?

David Wolf:

Yes.

The cases — which Congress had called to its attention during this legislative history — during this legislative history, this particular bill are very interesting because there are four cases which caught their attention.

Two of them illustrated, in our opinion, a proper setting for contributory infringement and two of them were illustrative of — of a situation which should not be contributory infringement.

Felix Frankfurter:

I’m sorry but direct my mind.

Am I — am I to infer that (Inaudible)

David Wolf:

No.

Felix Frankfurter:

— what was the ruling of this Court on —

David Wolf:

No.

Felix Frankfurter:

(Inaudible)

David Wolf:

No.

2 — 271 —

Felix Frankfurter:

(Voice Overlap) want to rely on the statute for your — for your position or the statute is declaratory or — or —

David Wolf:

The statute was declaratory.

Felix Frankfurter:

Alright.

David Wolf:

I believe Senator Saltonstall, when this came to a vote asked that specific question and Senator McCarran said, “It is a codification.”

In the House of Committee — House of Senate Committee reports will indicate it.

Now —

William O. Douglas:

Does that testify (Inaudible)?

David Wolf:

I don’t believe so.

In the respondent’s brief, he has made the specific statement that the clear and concise definition of contributory infringement now in the statute and every element of that definition represents no more than a codification of what is long and consistently believed and recognized as contributory infringement.

So I don’t believe that they are contesting that issue.

But the four cases, I’d like to call the Court’s attention, of the Mercoid case and the Carbice case which I think clearly indicate what is not contributory infringement.

Now, on the other side of the line, we have two lower court decisions which were called to the Committee’s attention and they’re referred to our — in our brief.

One is the Wallace versus Holmes case, the other is the Amalgamated Dental case.

And these cases considered what this word “material part” is.

I’d like to first mention this Wallace versus Holmes case because that particular case was a very early case.

It was discussed in the Committee reports.

That particular case had a — had a claim relating to a lamp burner mechanism.

If — the claim is reproduced in our reply brief, on page 5, the bottom of page 5.

Now, this particular claim recited a lot of elements in a lamp burner mechanism with a glass chimney which was especially designed to fit.

The defendant in that particular case made everything but the glass chimney.

The Court in that case said this is an infringement.

Well, they didn’t it was an infringement.

David Wolf:

They said this is a virtual infringement because the defendant here is making substantially everything but the background element of the glass chimney.

And so we’re going to hold them liable.

It’s interesting to note in this case, this was the very first instance of the word — to use the word “material”.

And the Committee reports, they — they indicate that this was a part of our law for 80 years.

And this was an 1871 case, so I suspect that the Court may have had reference to this particular case when they were considering what material was.

But you see here, there was a making of substantially the entire combination.

There was not a making of a single element or the sale of a single element.

The other case that was caught to the Committee’s attention was Amalgamated Dental case.

There was a case in which there were four chemicals in making a solution.

The defendant in that case was selling four chemicals without the aqueous solution.

And the judge in that case recognized that they were making substantially the patented invention except for the background element of the aqueous solution.

And they said — the judge said, “I’m going to hold the defendant liable on this particular case because he is making the substance of the invention.”

And incidentally, in that case, the judge on the District Court never recognized that this was different than Mercoid.

Now, those are the two cases which illustrate what contributory infringement should be.

Now, what contributory infringement should not be was decided several times by this Court.

One is the Carbice case and one is the Mercoid case.

Perhaps I — I ought to consider the Mercoid case first because this — that case, as far as I can see, is undistinguishable in all respects from this particular situation.

In the Mercoid case, the patent related to a furnace system in which one of the elements was a specially designed thermostat which was alleged to be the heart of the invention.

Now, the Mercoid Corporation was selling these especially designed switches.

They were suit for contributory infringement.

In that case, this Court said the attempt to hold Mercoid and the attempt to control the sale of these unpatented components is a misuse of the patent and they refused to enforce them.

The Carbice case is also similar.

In that case, there was patent on the combination of the — of dry ice and the package in which the dry ice was packed.

The defendant in that case was selling dry ice with the knowledge that it was being used in a particular patented combination.

There, the Court said you can’t control an unpatented component.

Now, we believe all these cases clearly in this — illustrate that the word “material” in this particular context really means the substance of the patented invention minus, perhaps, a background element.

I think if you’ll look at it in that term, you will — you will see that this particular statute does make some sense.

If you interpret it to mean an unpatented component even though it’s essential, you see it implying in the face of the rest of the statute which — which set up a very elaborate system for examining these — these claims.

If you say we’re going to protect this unpatented component what you’re saying is that every man can be his own patent office and every man by virtue of going into a — the patent office in getting a claim and a combination adding some element has — can thereby acquire a right to control the individual components all be it not themselves inventions and not patented.

I’d like to go one step further than — on this point on contributory infringement.

David Wolf:

That is the actions of the respondent in this case.

Now, the facts stated in our brief are fairly complete on this particular point.

But if you — in the — in the record you will see there are several licensing agreements.

One is with Ford, one is with General Motors and one is with Atlas International, a competitor of the petitioner in this particular case.

Now, all of these licensing agreements conditioned the right to continue the use of patented combination upon an agreement to pay a royalty on the — on the unpatented fabrics.

The language, for example, in the Atlas International agreement says, “Licensee will pay a royalty on any replacement top made, used or sold by a licensee without regard to whether such top is covered by either of the patents which by its peculiar shape or the construction is adapted to use in one or more of the following cars.”

There’s a whole long list of these cars.

And there are some other requirements in this particular agreement.

Now, the evil —

John M. Harlan II:

Did the company ever have a license?

David Wolf:

No — the petitioner has consistently refused to take out a license.

And I might say that is to the detriment of the petitioner because there is — there is evidence in the record that the — that — that one of the individuals associated with the Arsenal Corporation was writing letters to possible purchases of this fabric saying, “Don’t buy from anyone that hasn’t got a license.

Buy from Atlas International, they have a license.”

And we believe this is a very clear showing of substantial damage to the — to the petitioner.

We believe that this case comes clearly within the scope of the International Salt case and that there has been a clear showing of violations of the Sherman Act and the Clayton Act.

We — we believe that there has been a substantial attempt to monopolize the sale of unpatented fabrics.

And in this particular area of commerce, it’s a — not an insubstantial area at all.

In the record, there was evidence of the amount of royalties of this Atlas International has paid.

And in one year alone, these royalties amounted to $14,000.

Now, if you calculate the amount of tops necessary to generate $14,000 worth of royalties under their particular licensing agreement, you come up with a fee of something close to a half a million dollars.

This, as far as I can see, is a very substantial area of commerce which the — which — which has been monopolized or which has attempted to — be monopolized.

Charles E. Whittaker:

If I may require a local trimmer to make a new top for my automobile that I bought and paid for involves this invention, have I infringed this judgment or violate this judgment?

David Wolf:

You are hiring a local — a local trimmer making —

Charles E. Whittaker:

Do it myself or hire a local trimmer to make this new cover for the —

David Wolf:

A replacement fabric.

Charles E. Whittaker:

That’s right.

On my automobile.

David Wolf:

According — according to this particular decree, you would be infringing.

Charles E. Whittaker:

But what did I pay for when I bought the top from the car?

Did I not then inherently cover in the price of license to use the thing I bought?

David Wolf:

According to the — according to the respondent, no.

According to respondent, even though you still have the full mechanism, the body of the car, I mean this wiper arm and even though your fabric may, perhaps, be perfectly alright in this little — little “prolongationary” within the car and even though the — and even though that all it might be wrong is someone slashed the top in an area not even shown in the patented combination, you would be infringing.

Assuming —

Potter Stewart:

Mr. Wolf, might place is here to Mr. Justice Whittaker’s question not depend upon whether the top for — on a Ford or on an automobile because I understand this case, General Motors had a license, it’s arguable at least that its purchasers had — had implied licenses on the other hand, Ford Motor Company did not have a license and therefore, its purchasers did not have had.

David Wolf:

Well, our — our answer to that question is that the — the Automobile Body Research Corporation signed an agreement with the Ford Motor Company.

That agreement purports to be a release rather than a license but I say that it is immaterial as to what you’ve defined it.

And the important point was that Automobile Body got paid.

And as soon as they got paid, for — for this particular — this particular — for instance, their monopoly rights in that patented combination ended and they had no more right to claim anything with respect to those particular combinations which were — which was sold and which were released by that particular agreement.

There is a further answer to your question and that answer is that — that if this Court holds that the General Motor Corporation replacement fabrics or fabrics for those particular cars were — were improperly made the subject matter of this licensing agreement, then there has been a misuse and that in — in view of this misuse, the respondent has no right under the Morton Salt case, enforces patent.

There are — there are two other issues which we have raised and I would just like to briefly allude to them because they are fairly well spelled out in our brief.

The first is that since this is a patent and since this is an exception to the antitrust laws, the patent was — or an exception to antitrust laws, a patent owner is subjecting himself when he comes to the Court with much greater scrutiny as to his equitable content.

We called to your attention.

The respondent in this case was obviously going to shell corporation.

And in our opinion, obviously formed as a shell corporation to dodge — to dodge discovery proceedings and this — this would clearly was the case when we tried to find out certain facts and also for the purpose of isolating the companion to that.

Now, we believe that this is an equitable content which should not be tolerated in a patent case.

When a man comes in to court with a patent, he should be made to put it on the line.

He should be made to stand up and say, “This is my invention.

I am going to be subject to the scrutiny as to whether or not it’s a good patent.”

He should not be allowed to take part of that patent and hide it in a separate corporation so that it would still collect royalties on it.

There is also a constitutional issue involved which I think we spelled out in our brief which would not be met by this Court unless they found that the interpretation on 271 (c) reached by the respondent is the correct interpretation.

I should like to reserve my remaining time.

Earl Warren:

Mr. Spritzer.

Ralph S. Spritzer:

Mr. Chief Justice, may it please the Court.

I’d like to point out that the charge of infringement which was actually made by the respondent here was limited to the charge that the Aro Company had infringed by replacing the worn-out convertible top fabric when — when it wore out.

There was no charge of infringement in the sense that Aro’s, having supplied a manufacturer with material which he in turn might use to install the original top.

So that we don’t have here, so far as the charge of infringement is concerned, a question of the supply for purposes — supply of an element for purposes of creating the entire patented entity.

The charge is simply that there was an infringement when these fabrics were supplied to infringe afterward to do-it-yourself car owners to replace the original fabric.

And that being so, I can assume I think of — for the purpose of the central issue in this case, the charge of infringement made.

I can assume that if Aro had supplied these convertible top fabrics designed as they were to an automobile manufacturer who had no license from the patentee and if that automobile manufacturer had taken the fabric and then, together with all the other elements which made up the combination, created the patented articles that that would constitute a direct infringement.

We can assume further for purposes of —

Potter Stewart:

On the part of the automobile maker.

Ralph S. Spritzer:

On the part of the automobile maker.

Potter Stewart:

A contributory infringement presumably on the part —

Ralph S. Spritzer:

I presume further that Aro in that event might have been liable as a contributory infringer —

Potter Stewart:

When you’re talking about supplying (Voice Overlap) —

Ralph S. Spritzer:

For supplying the (Inaudible)

Potter Stewart:

You’re not — you’re not talking about supplying bulks of fabric, you’re talking about supplying a — a completed fabric, safe fabrics for this (Voice Overlap) —

Ralph S. Spritzer:

Yes, when I speak of the top fabric, I mean in the form and design.

Potter Stewart:

Shape and design.

Ralph S. Spritzer:

Shape and design (Voice Overlap) —

Potter Stewart:

It’s a combination patent.

John M. Harlan II:

That will be cool even though the top itself is not fabric.

Ralph S. Spritzer:

No, I’m — the — the patent with which we deal in this case is a combination —

John M. Harlan II:

Combination patent.

Ralph S. Spritzer:

— patent which has a number of elements of which the fabric in its particular shape and design is but one element.

John M. Harlan II:

And not patented —

Ralph S. Spritzer:

And not patented, never thought it may.

John M. Harlan II:

But in the illustration you’re giving —

Ralph S. Spritzer:

Yes.

John M. Harlan II:

— this should’ve been to a manufacturer not — not withstanding that fact.

It was agreed there was a contributory infringement.

Ralph S. Spritzer:

No, I say that I’m — petitioners argued that even in that event, there will be no contributory infringement on his part —

John M. Harlan II:

I understand.

Ralph S. Spritzer:

— because he believes all of the conditions of Section 271 would still not be satisfied.

I say I don’t — I think we can put that to one side because no charge of infringement here is based upon supply to an automobile manufacturer.

John M. Harlan II:

You don’t —

Ralph S. Spritzer:

And I’m going to —

John M. Harlan II:

— you don’t (Voice Overlap) —

Ralph S. Spritzer:

(Voice Overlap) myself to the narrower question which is the only question of which the Court of Appeals has spoke at this time at least.

And that part is the only point I’ve been tending to make that far is that we don’t deal with alleged infringement by automobile manufacturers about their suppliers.

Ralph S. Spritzer:

And thus, I think the primary focus of inquiry becomes this whether an individual, an ordinary consumer who has bought a convertible automobile from one who was authorized to make it in the way that he did, whether that consumer — when the fabric wears out, two or three years later, exceeds his rights, if he goes ahead and replaced it with either himself or with someone else’s aid with another new fabric of similar design.

Now, I think everybody in this case concedes that if there is no direct infringement, if it’s not an infringement by the automobile owner to replace the fabric that then there is no issue in contributory infringement because without the direct infringement, no one can be contributing to an infringement.

Charles E. Whittaker:

(Inaudible)

Ralph S. Spritzer:

I think so, yes.

I (Inaudible) briefs.

Another way of stating, we think, is the central issue or at least the issues which Government has assigned itself is that we have here, another way of stating it is we have here a question as to the scope of the owner’s right to use the article which is involved.

And that the burden of our contention is that a man who buys an automobile has an implied license to use it freely to hold on that.

That he’s entitled to use it for as long as Yankee ingenuity could keep it going.

And that to this end, he can replace individual component parts of a patented combination as they wear out or becoming exhausted in ordinary course in advance of the enlightenment of car is uphold that he can do this without any further license or authorization from anyone, so long as the individual part in question is not itself patent.

John M. Harlan II:

Supposing the day after, your hypothetical car owners (Inaudible) one of his tops.

Ralph S. Spritzer:

Yes, sir.

John M. Harlan II:

He then goes to a competitor, I like your design, because the distributor is a little better, I like your color better, he rips the top of the article that he bought and replace it with that (Voice Overlap) —

Ralph S. Spritzer:

I think he can —

John M. Harlan II:

Can you say he can do it?

Ralph S. Spritzer:

— I think he can do it as the matter of case, yes, because —

John M. Harlan II:

(Inaudible)

Ralph S. Spritzer:

— this is an unpatented element and I don’t think the replacement of this single element constitutes a recreation of the patented combination.

Of course, the findings in this case are that people normally replace these tops when they become either highly unattractive or seriously worn out in two or three years on the average (Inaudible) of the car.

John M. Harlan II:

But in your point of view, you said that it doesn’t make any difference (Inaudible)

Ralph S. Spritzer:

That is right in the case where there is something which fall short, as I think it’s clearly the situation here —

John M. Harlan II:

Of —

Ralph S. Spritzer:

Of a —

John M. Harlan II:

— some —

Ralph S. Spritzer:

— of a recreation under the combination.

Charles E. Whittaker:

(Inaudible)

Ralph S. Spritzer:

That is right.

That’s right.

I should pause to emphasize what I think the Government’s interest and — and concern in this litigation which has brought up in this case.

We think that if one were to adopt the tops, the court below I think is gone, whereby if you suffice for the patentee to show that the parts being replaced, part of the combination being replaced by the purchaser of the machine is a significant part or an integral part or a major part or an extensive part, if it were to — if that would suffice so as to enable him to monopolize the replacement of this element, we think then a patentee would be encouraged and would be permitting to assert monopolistic powers over the replacement parts market, even though the part is in question by themselves unpatented.

John M. Harlan II:

Could I ask you one more question and I will try not to interrupt you after that just to make sure I understand your thinking.

John M. Harlan II:

Does your position describe what sometimes is called the basis of difficulty between reconstruction, repair or replacement insofar as the article itself is an unpatented component of the combination of patents, you discard that distinction?

Ralph S. Spritzer:

As we understand the distinction —

John M. Harlan II:

I mean —

Ralph S. Spritzer:

— we think the distinction is between permissible repair or replacement of a — of component parts on the one hand and forbidden reconstruction of the entire combination on the other hand.

John M. Harlan II:

Well, I’m limiting myself simply to an unpatented component — unpatented combination.

I thought you said that it didn’t make any difference in your view what the reason was for the replacement of that one unpatented element.

Ralph S. Spritzer:

Oh, if — if the replacement is of a single element, then I think it can be done in all circumstances.

But I think —

John M. Harlan II:

But it’s really construction or repair?

Ralph S. Spritzer:

I think — I think it was the replacement and repair concept which permitted owner to replace for reasons of personal preferences as well as the purposes of utility.

And I think the — the real problem that we — that we have is, what is the difference?

What is the line as between permissible repair or permissible replacement of components and through reconstruction or complete reconstruction or substantial reconstruction of the patented combination?

And that — that I’ve really like to come to next but I should, perhaps, emphasize though, I think petitioners’ counsel has already alluded to it.

I’d like to emphasize that here, we don’t have a patent on the fabric or indeed on one element, we have a patent covering a combination of a number of elements.

And the findings on that were at page 36 of the record and at that point, Judge Aldrich was pointing out, I’m looking about half way down the page, he was pointing out what the investors — 36, yes, sir.

He was pointing out what he thought the inventors of this particular convertible top had accomplished and he said, “Rather than affixing the fabric, the tonneau itself they attached it to a trough or gutter and then he goes on to describe how water would be directed into a trough and carried out by a drain, how a wiping arm would be utilized in order to affect the seal and I shouldn’t go into the details, but I do want to make the point that there’s no room in this case, I think were the suggestion, that the car owner’s replacement of the fabric alone could constitute either a replacement or a substantial replacement of the entire system which was the subject of the combination patent claim.

Perhaps, I should also add parenthetically that there is no obstacle or whatever provided a patentee and make the requisite showing that the standard of invention meant.

There’s no obstacle whatever to obtaining a patent on the combination and patent rights in relation to a sub-combination or an ingredient element.

This Court has recognized that one can obtain both kind of protection, the patent office in — in numerable instances just granted patent rights both in relation to a combination and in relation to an ingredient element of the combination.

And so what we have here essentially is the — a result in this case which permits the patentee who has only claimed the combination of the entire system.

A result which permits him to accomplish the very thing that he could’ve accomplished assuming that this fabric was separately patentable that he could’ve accomplished if he’d gone to the patent office made the claim and subjected it to the scrutiny to which it then would’ve been subject.

Now, how does the court below reach the conclusion of the patentee’s rights were trespassed by the fore owner’s replacement of the fabric?

It deals with that — it’s the Court of Appeals summarizes this position at page 655 of the record which is a very thin volume and — on that page, it notes that the fabric is not a minor or relatively inexpensive component, then goes on to add that the fabric does not wear out after a very short period of use.

Although it recognizes it at the same time that the life of the fabric is several times shorter than the life of the invertible top assembly as a whole or to deal it as a whole.

And then it finally concludes that the car owner would not rationally believe that he was making only a minor repair.

In our view, the Court had gotten the wrong answer in this case because it has asked the wrong question.

We think the question is not whether the unpatented component is major or minor, expensive or inexpensive, not whether it wears out every two months or every two years, the question ultimately to be answered by the Court is whether the man who has bought the article and thereby obtained the implied right to used it, the question is whether he has abused that right by making a new article, by recreating the entire combination which alone is the subject that protects.

Potter Stewart:

Under the statute, the question, the right question is that they are not immaterial part, isn’t that true?

Ralph S. Spritzer:

That would be a question only if you reach an issue as to contributory infringement.

The statute itself makes the claim in 271 (c) that there is no action for contributory infringement except — insofar if there is a contribution to direct —

(Voice Overlap) —

Ralph S. Spritzer:

(Voice Overlap) and 271 (a) leaves the law of direct infringement where it starts.

Congress was explicit that it was not attempting to legislate on the subject with what he is direct infringement.

It explains that if one can make clear that there were some circumstances in which actions were contributory infringement would be possible.

If would induce to provide by statute for contributory infringement action, they could — some members of the Patent Bar doubted after the Mercoid case of what scope there was left for contributory infringement actions, Congress said, “We want to authorize and make clear that in a proper case, there could be an action for contributory infringement as well as the record.”

And so Your Honors are quite right, I have been confining myself to what is direct infringement and that is why I put aside at the outset the situation which might exist if fabric were being supplied to a manufacturer who was then getting all the other elements assembling them all and creating initially the patented combination.

Potter Stewart:

An important justification for holding somebody liable — for — for the whole doctrine of contributory question is, is it not that — that that comes into play when the actual technical infringement has been done by somebody who has a difficulty or other reasons that it just would not be practical or practicable liable for direct infringement i.e. the customer.

Ralph S. Spritzer:

Yes.

Potter Stewart:

And this is where the whole doctrine (Inaudible)

Ralph S. Spritzer:

I think that — that the —

Potter Stewart:

Not the justification (Voice Overlap) —

Ralph S. Spritzer:

(Voice Overlap) —

Potter Stewart:

— make it sound rather absurd that Justice Whittaker would be infringing a patent when he had flaps put on his or new tops on his convertible car that would — that would be a technical infringement.

Nobody’s trying to hold the infringement and that’s the whole basis for — for the doctrine (Voice Overlap) —

Ralph S. Spritzer:

That is the reason.

The reason pursuing the contributory and the alleged contributory infringer is that you’d have to sue 100 people if all the consumers — if the consumers were direct — were the direct infringers but that did not avoid the necessity for the plaintiff charging infringement establishing the user —

Potter Stewart:

Shall (Voice Overlap) —

Ralph S. Spritzer:

— is a direct infringer.

He doesn’t have to go after him but he has —

Potter Stewart:

(Voice Overlap) try to hold him liable.

Ralph S. Spritzer:

That — you don’t have to hold him liable but he has to establish of what the replacing car owner did was the direct infringement, this whole case perhaps on that.

Felix Frankfurter:

But even after that, the statute is declaratory.

Ralph S. Spritzer:

He’s — the statute didn’t —

Felix Frankfurter:

Declaratory, namely that he couldn’t be a contributory infringer or so-called (Inaudible)

Ralph S. Spritzer:

That’s right.

I — I — that point I’m making it and perhaps I wasn’t clear was the Congress didn’t provide any new standard or test as to what a direct infringement would be.

Felix Frankfurter:

(Inaudible)

Ralph S. Spritzer:

Now, the leading case in this Court as to the question of permissible repair or replacement on the one hand versus forbidden reconstruction of the entire combination on the other is Wilson against Simpson to which I’d like to refer briefly.

That was the case in which there was a claiming machine — with claiming machine which consisted among other things of a pressure roller and sets it nice.

And that the patent there again was solely on the combination.

Ralph S. Spritzer:

The question which arose was whether the man who had bought this machine would replace the cutting knife when they wore out and develop.

They did after several months and sustain the use.

And this Court said in that case that to be sure that there is no right to build — rebuild the machine as a whole, then it served, however, that the machine continues to exist even though certain essential parts, essential parts have become worn out.

Earl Warren:

Mr. Spritzer, during — during your argument, you refer to Yankee ingenuity.

It’s my information that today, you would’ve been much better advised to have referred to acquiring this ingenuity.

Ralph S. Spritzer:

Thank you.