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

PETITIONER: Aro Manufacturing Company, Inc.
RESPONDENT: Convertible Top Replacement Company, Inc.
LOCATION: Cumberland Hospital

DOCKET NO.: 75
DECIDED BY: Warren Court (1962-1965)
LOWER COURT: United States Court of Appeals for the First Circuit

CITATION: 377 US 476 (1964)
ARGUED: Feb 17, 1964
DECIDED: Jun 08, 1964

Facts of the case

Question

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

Audio Transcription for Oral Argument - February 17, 1964 in Aro Manufacturing Company, Inc. v. Convertible Top Replacement Company, Inc.

Charles Hieken:

-- as construed by the court below to confer patent monopoly over an unpatented element that is not the discovery of an inventor.

Our brief also discusses whether a final judgment, dismissing a complaint for a patent infringement, can include an advisory finding not relevant to deciding the case or controversy between the parties that a patent is valid.

We leave to our memorandum, filed last August, a discussion of respondent's motial -- motion to settle order in which respondent seeks to exclude certain material related to respondent's inequitable conduct in violation of the antitrust laws and misusing combination patents to restrain trade of non-patented goods.

We turn, first, to a discussion of the scope of the combination patent monopoly.

The combination patent here in suit is entitled convertible automobile folding top with automatic seal at the rear quarter.

Now, the combination patent in suit here covers a combination of elements which function together to affect a water-tight seal at the rear quarter of the automobile.

One of the elements in the patented combination is the unpatented fabric element.

There is no separate claim to the fabric and, therefore, the fabric element is itself not patented.

Ford and General Motors cars for the years in the early 1950s embodied the patented combination as original equipment.

The petitioners make, sell, and on occasion install only replacements for the unpatented fabric element of the patented combination.

As a result of this activity, respondent charged petitioners with infringement and contributory infringement.

The District Court, the first time around, found both infringement and contributory infringement arising from the manufacture, installation, and sale of these unpatented replacement fabrics for both Ford and General Motors cars, and accordingly entered an interlocutory judgment.

The Court of Appeals affirmed that judgment.

This Court then granted certiorari and reversed.

After denying respondent's petition for rehearing or any alternative, a motion for a clarification of opinion in which respondent advanced the same arguments that it had advanced in its brief on the merits and is now advancing in this hearing that it was entitled to patent monopoly over replacement fabrics for Ford cars even though it wasn't entitled to monopoly rights over replacement for General Motors cars.

This Court then remanded the case directly to the Massachusetts District Court.

The Massachusetts District Court, first, entered final judgment, dismissing the complaint with cause to petitioners and dismissing petitioners' counter claim without cause.

At the same time, it held the patent valid.

We move to amend and, accordingly, the District Court struck out the finding of validity from its final judgment and also amended the final judgment to expressly state that the dismissal of our counter claim was without prejudice.

Respondent then appealed from this decision of the District Court, claiming that it was entitled to monopoly rights over the unpatented replacements for Ford cars.

And, petitioners cross-appealed, claiming that the record, then before the court, required a conclusion that not only had respondent and its assignor misused the combination patent to restrain trade of non-patented replacement fabrics and was, therefore, barred for maintaining either an action for a direct or contributory infringement, but also had violated the antitrust laws.

Well, the Court of Appeals vacated the District Court final judgment and reinstated that portion of its prior judgment that had been reversed by this Court dealing with replacement fabrics for Ford cars.

And, they conferred patent monopoly over some unpatented replacement fabrics for Ford cars, depending upon the interpretation of a private agreement between respondent's assignor and the Ford Motor Company.

In that private agreement, Ford had released -- or rather respondent's assignor had released Ford and owners of its cars from liability arising from the manufacture, use, and sale of the patented convertible automobile but expressly reserved the right and exercise the right to license the manufacture, use, and sale of the unpatented replacement fabrics.

The Court of Appeals, in reviewing the decision of this Court, said that what the Court said in its opinion gave it little guidance, but what the Court did not say, it felt, meant that the Court was not deciding the question as to the unpatented fabrics for so-called “unlicensed Ford cars.”

And, while the Court of Appeals did quote what this Court said was the principle and determinative question presented here, whether the owner of a combination patent comprised entirely of unpatented elements has an additional patent monopoly on the manufacture, sale, and use of the several unpatented components of the patented combination, the Court of Appeals did not quote the answer that this Court gave to that question.

And, this Court answered that question by saying “no element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how difficult or costly replacement may be.”

Now, it's silly to distinguish between the replacement fabrics for Ford cars and for General Motors cars because the replacement fabrics for Ford cars are just as unpatented as those for General Motors cars.

And, this Court pointed out the basic fallacy in respondent's position in the prior opinion as follows, which is just as applicable today.

They said the basic fallacy in respondent's position is that it requires ascribing to one element of the patented combination the status of patented invention in itself.