RESPONDENT: Convertible Top Replacement Company, Inc.
LOCATION: Convertible Top Replacement Co.
DOCKET NO.: 21
DECIDED BY: Warren Court (1958-1962)
LOWER COURT: United States Court of Appeals for the First Circuit
CITATION: 365 US 336 (1961)
ARGUED: Oct 13, 1960 / Oct 17, 1960
DECIDED: Feb 27, 1961
GRANTED: Feb 29, 1960
David Wolf - for the petitioners
Elliott I. Pollock - for the respondent
Ralph S. Spritzer - for the United States as amicus curiae, urging reversal
Facts of the case
Convertible Top Replacement Co., Inc. obtained a patent for a “convertible folding top with automatic seal at rear quarter.” The folding top included a flexible top fabric, supporting structure, and a sealing mechanism. None of those parts were individually patented. Convertible Top sued Aro Manufacturing Co., Inc. for direct and contributory patent infringement for manufacturing and selling replacement fabric designed to fit the patented device. After trial, the district court ruled in favor of Convertible Top and enjoined Aro from further manufacture or distribution of the fabric replacements. The Court of Appeals for the First Circuit affirmed.
Can a patent holder prevent the manufacture and/or distribution of a replacement part for a patented device when the replacement part is not itself patented?
Media for Aro Manufacturing Company, Inc. v. Convertible Top Replacement Company, Inc.Audio Transcription for Oral Argument - October 13, 1960 in 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.
Number 21, on the docket Aro Manufacturing Company, Incorporated, Petitioners versus Convertible Top Replacement Company.
Mr. Spritzer you may continue your argument.
Ralph S. Spritzer:
Mr. Chief Justice, Your Honors.
In the very few minutes remaining to me, I should like to attempt to restate briefly the propositions argued last Thursday and then to state concisely what we think is the appropriate test which should govern this case.
My starting point was that we deal here with the combination patent by the convertible top assembly and that none of the individual elements, either the fabric, nor any of the other element, has been separately patented.
From that, it follows that one can find infringement only if there has been an unauthorized creation or recreation of the entity, for that alone is the subject to patent taxes.
Now in this case, the court below found contributory infringement by the petitioner although the top fabric was supplied only for purposes of replacing worn out fabrics and not in any instance, for purposes of building a new convertible top assembly.
In support of its conclusion, the court below said that the fabric is sufficiently important, sufficiently expensive, sufficiently durable, though not nearly so durable as the cars hold, that a car owner would not rationally believe that he was making only a minor repair.
Now, we take direct issue with this entire line of reasoning.
We urge that the patent on a combination does not give patent protection on unpatented parts, whether they be major or minor.
And we say it further that any person reading the patent claim, which was filed in this case, was fully entitled to believe that he could repair or replace any individual component of the machine, when that component in ordinary course, wore out.
I spoke the other day at the close of this Court's decision in Wilson against Simpson, which involved a combination patent on a planing machine and the Court in that case held that the cutting knives which were one element of the combination could be replaced as they wore out.
And in so holding, the Court said "It is the use of the whole of the combination which a purchaser buys."
Then the Court went on to say, that the purchaser may not be deprived of the right "To give duration to that which he owns or has the right to use as a whole."
This Court of course, has followed that the same approach in other similar cases.
The same view, we think, finds conspicuous support in decisions of the -- Second Circuit, although I must add that there are other lower federal court decisions which seem to adopt the approach similar to that adopted by the Firth Circuit in this case.
Among the Second Circuit cases on which we particularly rely, is a case called General Motors against Preferred Electric, which is particularly interesting in that, it, like in this case, involves replacement of automobile parts.
The patented combination in that case was on a circuit breaking system which was designed for incorporation into an automobile ignition.
The breaker arms and certain brackets which held those arms wore out and were replaced.
The Court of Appeals said in that case that the breaker arm which had worn out was the very gist of the invention.
It then stated that nonetheless since the breaker arm was not separately patented but was one of the number of elements that the owner of the car could replace it at will, in order to restore the machine.
And in still another Second Circuit case though not one involving directly the issue of repair versus reconstruction, Judge Learned Hand stated what we think is the gist of the rule.
He said, "The patent monopolist cannot prevent those to whom he sells from reconditioning articles worn by use, unless they in fact, make a new article" and I think that sums up the -- the test we urge.
John M. Harlan II:
What is the name of that case?
Ralph S. Spritzer:
That was in Alcoa case, Your Honor.
We state -- say that true reconstruction means making a new article after the machine viewed as a whole has been destroyed or has otherwise deteriorated.
William O. Douglas:
What do you say about the respondent's argument that -- that had been, is not the substitution of material here but that if the infringement is in the shape of the -- the distinctive feature of the -- this patent is the shape of this material.
I think that's what the -- that's the line that the Court of Appeals --
Ralph S. Spritzer:
Yes, we say that even assuming that the -- the possibility that the material itself might've been the subject of a separate patent that it was not in fact a patent and no claim was made to a patent based on the shape of the fabric.
Therefore, we say that no more than a single element of a multi-element combination is being replaced.