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

PETITIONER:Aro Manufacturing Company, Inc.
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

ADVOCATES:
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.

Question

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?

Earl Warren:

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.

Ralph S. Spritzer:

And at a minimum, we argue that replacement of an individual worn out part of a multi-element combination cannot properly be deemed anything more than the owner’s right to maintain his property and to enjoy its (Inaudible)

John M. Harlan II:

What were the lower court’s findings as to the condition of the top when it was replaced or detached?

Ralph S. Spritzer:

They found that in some instances they were unattractive and in other instances they wore out and that the court put aside any question of the distinction between replacing it for reasons of taste and replacing it because its utility had completely disappeared.

It said — the District Court said that it had no doubt that this constituted replacement of something that was no longer usable.

And the basis of its decision was that — that this was a major replacement in this case.

I think I’m beginning to trench on time reserved by petitioner for rebuttal Your Honor.

Earl Warren:

Mr. Pollock.

Elliot I. Pollock:

Mr. Chief Justice and may it please the Court.

Felix Frankfurter:

Do you think without disturbing the architecture of your argument is it stated the outset what legal proposition you are tending to the Court?

Elliot I. Pollock:

I propose to do that Mr. Justice Frankfurter.

In order to clarify our position in this matter and in order to be of assistance of the Court and the problems before it, I propose to divide my argument into four main sections.

First, I would like to explain exactly what the Mackie-Duluk patent is all about, what problems it was intended to solve and how it’s solved.

Secondly, I will explain what the patent on err, what the both courts below considered to be an infringement of the patent and the other side of the coin what is clearly not an infringement of this patent.

Third, I will discuss the doctrine of repair versus reconstruction.

This doctrine which we maintain has been in the law for over 100 years.

This doctrine which we maintain was reenacted by Congress in 1952 and this doctrine which was the very basis of both decisions below.

And finally, as a fourth section of my argument, I hope to demonstrate that what the Justice Department is here trying to do, is to change the law contrary to the intent of Congress in 1952 and that they are trying to do that on the basis of the very arguments which they presented to Congress and which were rejected by that body in 1952.

Is that —

Felix Frankfurter:

Your view — but your view is that the Act of 1952 did not make a change in the law, but merely is declaratory of the old one.

Elliot I. Pollock:

Quite so; yes, yes and at such, as it will appear, we maintain that it has left intact as the Justice Department itself says, “Left intact, this entire body of law.”

William O. Douglas:

So you are on common ground would be of the petitioner at that point.

Elliot I. Pollock:

We agree.

Yes, we agree with the law that left intact in this question of repair versus reconstruction.

Now let us consider this first question that I mentioned before what is the Mackie-Duluk patent all about?

Well, as has been clearly stated, it is not involved with the car.

It doesn’t concern a car and it doesn’t even concern a convertible car.

It concerns as its very title says, a portion of the car, a convertible folding top with an Automatic Seal at the Rear Quarter.

It’s concerned with one part of the car, the top structure and in that event, a special type of top structure, one, with an Automatic Seal at the Rear Quarter.

Before proceeding, I think, we ought to have some definitions here.

The Rear Quarter section of the car is the section on the side of the car immediately to the rear of the side windows.

Elliot I. Pollock:

If you will picture yourself sitting in the rear seat of the car and if you look immediately to the right or the left that is the section of the car we are talking about.

The section where this Court may recall convertible top structures in the past, used to have snap fasteners.

That is the very section of the car.

And — there’s another term that may arise from time to time, that is the belt line of the car.

That is the top of the middle structure of the car, the top of the lower body of the car.

Now, prior to the Mackie-Duluk invention, fabrics which were used in inconvertible cars were typically shaped so that they terminated in his Rear Quarter section, immediately adjacent or above the belt line of the car.

And they habitually had some sort of manual fasteners on them, like snap fasteners or a channel in top arrangement, so that after the top have been completely raised, this fabric in the Rear Quarter section could be pulled down and manually fastened to the belt line of the car in that region.

Perhaps, the Court will recall such structures.

They were the typical structure prior to 1950.

Now these structures had been in existence for a long period of years.

Perhaps at least, 50 years or so and over this entire period of time, everyone recognized that they had at least three major problems.

The first problem of course, was that they require, if you will, a manual seal in the Rear Quarter as distinguished on the Automatic Seal with which were concerned here.

It meant that even with the advent of motors, motor driven structures to fold your convertible top up, even after the top had been completely closed over the car, someone had to get out of the car and walk around in the side of the car and actually snap this fasteners in place to complete the closure and this often occurred under conditions of inclimate weather.

The second major problem was a problem of shrinkage in this region.

Since the fabric material in the Rear Quarter section was loose, we found that often after a limited period of usage, even though the top was in fine condition, the material had shrunk a little bit in this region so that even when you tried to pull the fasteners down, you just couldn’t quite reach the belt line.

And as a result, you just couldn’t make a seal at all in this region of the car and you had some loose flaps so that wind or snow or rain could come into the car.

This was of course, a major problem and there was the third problem which had been discussed in the record this problem of so-called, unauthorized access.

A convertible car can never be reliably locked even now because the top can be slashed, but it was very easy to get into convertible cars prior to 1950, simply because anybody who wanted to get into the car, even when the doors were locked and the window’s completely closed, could merely unsnap these fasteners and reach into the car at that region and open the door or what have you.

These three problems —

John M. Harlan II:

Is the validity of the patent at issue?

Elliot I. Pollock:

No, it’s not Your Honor.

No — it’s not.

The patent was found valid by the trial court and validity has never been a question even in the Court of Appeals or here, but I believe that this discussion is important so that we understand what the contribution was which Mackie-Duluk made and — and how it’s important here.

These three problems as they say were recognized for some 50 years and even though the engineers — the best engineers in the industry have been working on it diligently, no solution came up until Mackie-Duluk finally came up with a solution which is the subject of this case.

Mackie-Duluk solution can perhaps, be best appreciated by seeing what they didn’t do.

In the first place, they made absolutely no change to the car body, no change to the folding top structure at all.

No change I should say to the bows and the pillars.

These were conventional linkages which were precisely the same in Mackie-Duluk’s convention as they had been for years before.

What they did do, was to change the shape of the fabric in this Rear Quarter section.

They, rather than having the fabric terminate at the belt line of the car as was the case before, they caused the fabric to be shaped, so as to extend deep inside of the car, where it could be permanently fastened.

Elliot I. Pollock:

And while in retrospect, this seems to be a fairly simple approve — improvement now, actually, it was quite a startling improvement in 1950.

It was an improvement which solved, if you will, 50 years of problems.

And this simple change, this — this one change in the shaping of the fabric, brought a complete solution immediately to all of these problems.

Now, —

William O. Douglas:

Are the claims in — in the record — I don’t — I’m unable to find them.

Elliot I. Pollock:

Yes, they are Mr. Justice Douglas.

The patent itself appears at record page 589.

That’s in the large volume of the record.

William O. Douglas:

Yes.

Well, the Government, their counsel says that the — the shape was not a part of the invention.

Elliot I. Pollock:

With this we – we —

William O. Douglas:

Within — within the meaning of the — within the limits of the claim.

Elliot I. Pollock:

I — I understand that that is their argument, but the concurrent findings below were to the contrary.

I believe that the claim is quite clearly due to define shape, but we but understand them and I might note for the Court’s (Inaudible), if you will, the Court of Appeals itself and this is at record page 651, at record page 651, about halfway down the first full paragraph, you will find that the Court of Appeals and this is a concurrent finding but the Court of Appeals states it very well.

This is in the — Mr. Chief Justice, this is in the small volume, the very small volume of the record.

You’ll find that the Court of Appeals there says that shortly after the citation of Heyer versus Duplicator, says the Mackie-Duluk patent does not broadly cover the fabric portion of the folding top of any form or shape.

It specifically covers the fabric part of such a top of a particular form or shape.

The form or shape is particularly covered in this fabric — in this patent, if we could understand the claim.

The claim is difficult to read immediately, but they very clearly do set forth this fabric shape and no one has had difficulty below on this question.

Felix Frankfurter:

(Inaudible) anticipating believe the direction of your argument that because of the nature of the fabric shape, it is an ingredient part of the total (Inaudible)

Elliot I. Pollock:

It is the — it — in essence the heart of the invention if you will.

Upon its removal, there is nothing left of patentable nature.

It is the thing which solved the problems.

It is the invention, if you will, although it was claimed in combination with other components and this claiming in combination with other components should be understood.

We have briefed this matter in our brief, but when the suggestion is made that the fabric shape could be claimed alone, this is not correct.

This — we challenge.

The problems which are involved in the claiming of the thing like a shape all by itself, were discussed at great length before the Congress prior to 1952 and I believe that this Court will appreciate that shape in the abstract is meaningless.

You just cannot define a shape as such.

The shape becomes meaningful only when it is put into its proper environment.

And therefore, under these circumstances, the Patent Office itself, required that these standard elements be put into the claim, so that one can understand exactly what this shape is, even though these other elements are not part of the invention.

Felix Frankfurter:

Are you saying in effect that the — what is meant by combination in this particular patent, is the relationship of the part that can’t be broken into separate units?

Elliot I. Pollock:

I’m saying —

Felix Frankfurter:

And yet the copy is significant?

Elliot I. Pollock:

I would prefer to say it that these other parts are necessary to understand just where the — the parts of this new shape go and what they are for.

William J. Brennan, Jr.:

Where do you say in the record, were the claims that indicated that they included in the shape of the fabric?

William O. Douglas:

The claims are on page 594, aren’t they?

Elliot I. Pollock:

Yes.

William O. Douglas:

They start there?

Elliot I. Pollock:

Yes.

William O. Douglas:

I’m — I haven’t found the word, shape, at least there.

Elliot I. Pollock:

Oh, perhaps I can understand — let me anticipate by pointing out what these claims are all about.

If I wish to define the shape of a glove, I may have great difficulty in defining it in the abstract.

If I start of though, with a standard structure which everyone knows about and then point out that we are concerned with a fabric which includes portions covering the palm of the hand and the rear of the hand and portions encompassing each of the individual fingers, if you will.

This immediately conjures up a very clear picture of what shape we’re talking about even though we have related it to a standard structure and we must recall that in this case, the car body, the panels, the pillars, the bows and so forth that we are talking about, are structures which were well-known to everyone in this industry.

These are structures in which no change was made.

These are common structures and therefore, when we speak of this, a fabric in point of the — we point out in these claims that this fabric includes a portion which is supported by the bows and this immediately, strikes a picture in the minds of those skilled in the art.

It includes a portion which spreads and adjoins the belt line of the car.

It includes another portion which extends considerably below the belt line of the car and it’s fastened to a panel, a common structure in these cars which everybody knows about.

In this frame of reference therefore, those skilled in the art, immediately have a very clear picture of what the fabric shape is and indeed, this demonstrates one of the purposes in bringing in these other common components for they assist in the definition of the shape.

They make the shape very clear to those skilled in the art and it must be understood of course, that these claims are directed to persons skilled in the art.

They — they would not mean much to a man in the ice cream industry, if you will, but to people in the automobile industry, these are quite definite recitations of what we’re talking about here.

Felix Frankfurter:

Does your argument as this shape apply to all the other constituent parts of the whole?

Elliot I. Pollock:

No, it does not Your Honor.

Those were standard parts because they were nothing new.

They — they were not new in themselves.

They were, if you will, stable — stable articles of commerce, to use the term of the statute.

These — the — the heart of the invention, the inventive improvement, the change which Mackie-Duluk conceived, was in this new shape.

William O. Douglas:

The only thing I see about the material is that it’s flexible top material.

Elliot I. Pollock:

Well, let us refer to Claim 1, for example, Your Honor.

William O. Douglas:

The shape there is the — is the shape of the folding mechanism as I see it.

Elliot I. Pollock:

No, it has flexible top material are we looking at Claim 1?

William O. Douglas:

Yes.

Elliot I. Pollock:

Starting at about line 40 there, you see we have flexible top material supported by the bows and having the top material at the Rear Quarter extending down and supported by sub panel in the inside and considerably, below the top of the metal body or tonneau.

This is all a definition of — of the shaping in this Rear Quarter.

It’s extension down considerably below the top of the metal body and so forth.

A claim such as 4, that define a shape and — and even other terms as a flexible top material, this is at Claim 4, at about line 17 or 18.

It says it has flexible top material supported by the bows and having the top material at the Rear Quarter extending down and fastened to said panel on the inside and below the top of the metal body or tonneau, a portion of said top material spreading and adjoining the inside of the top of the side of the tonneau when the bow structure is raised and so forth.

This sounds like a lot of words, but as I say to those skilled in the art, this conjures a very clear picture of what we’re talking about.

John M. Harlan II:

They are clear pictures in the record that you can look at (Inaudible)

Elliot I. Pollock:

The — the patent itself, unfortunately, because we are talking about shape, it is very difficult to explain what the shape is.

In — in this respect, the courts below were counterfeited in the certain respects.

The trial court on two occasions adjourned to a nearby parking garage to actually abuse some of these structures and the Court of Appeals had actual tops before them.

William J. Brennan, Jr.:

Will we — will we have to do that?

Elliot I. Pollock:

I don’t believe so.

It would certainly assist in your understanding of the shaping consideration but Mr. Justice Brennan, we don’t have any cars here unfortunately.

John M. Harlan II:

Take two cars of the same size, one of which has the top of your manufacturer, one of which has the old fashioned top —

Elliot I. Pollock:

Yes.

John M. Harlan II:

— not of your manufacturer, could you take the canvass, take the top from the non-Aro car or the non —

Elliot I. Pollock:

You mean, let’s say a (Inaudible) top.

John M. Harlan II:

— and put it on the other car —

Elliot I. Pollock:

Immediately.

John M. Harlan II:

What?

Elliot I. Pollock:

Immediately, without any change of the car whatsoever.

John M. Harlan II:

It does?

Elliot I. Pollock:

Yes, you could, Your Honor.

This is quite clear on the record that these car bodies and bows that we’re talking about are so standard.

There was no change whatsoever, to the car. One of these old tops can go on to the car immediately.

I believe that this will —

John M. Harlan II:

And I don’t understand what the virtue of this, what the significance on the shape is here (Inaudible)

Elliot I. Pollock:

When we put the old top on, we have our snap faster structures if you will, which raise all the problems that I have mentioned before.

Elliot I. Pollock:

When — when we put on the new shape on top, onto the car, we no longer have any of these three problems that I’ve talked about and this is the virtue of the shaping and the fastening considerations that I’m talking about.

I believe that if we get into — I hope to explain in this first section that the essential novelty in this thing, the heart of the invention, as it has in termed in various references and in various cases which I will discuss, the heart of the invention is cruxed in the dominant part of it was in this new shape in this fabric.

Now this being the case, let us consider this second question.

Hugo L. Black:

Why are you shaping at the thing that the inventors were in the main discovery was the fact that it didn’t have to use snaps?

Elliot I. Pollock:

Well this shape was the thing which produced that result, Your Honor.

Hugo L. Black:

You mean that its shape produces snaps?

Elliot I. Pollock:

No the shape permitting a permanent fasting deep within the car permitted someone to eliminate the snaps.

Hugo L. Black:

Well, you mean, no other shape can do it?

Elliot I. Pollock:

No, quite to the contrary.

What happened was that this — if I may explain this briefly, when this came out, it was the first development in this — in this particular concept of fasting fabrics inside of a car and Mackie-Duluk were, if you will, a pioneer.

They were pioneers in this field.

Their particular shape was used only for approximately three or four years and building on the structure as we do in all these new fields of — of endeavor where the Yankee ingenuity, if you will, is involved, the industry has since, dropped this shape completely and they’ve come up with quite different structures which are now lies involved in this suit.

This — this particular structure with which we are here concerned, was used only until about 1954 and has never been used since.

The industry, the record does not reflect what these new shapes are, but this patent is not concerned with any of these later shapes and arrangements.

They were quite different.

The industry having seen the way after Mackie-Duluk made some very significant developments and a technological advance in this field, with which this patent is in now way is concerned.

If I may, I would like to now, go into this question of what is infringement and what is not and what the courts found to be infringements.

I believe that we you might appreciate on the basis of the argument as I have thus far presented it, that once the fabric is removed from the car completely, we have substantially conventional components.

We have, as I pointed out to the Court before, to Mr. Justice Harlan I believe it was a — a structure of such conventional nature that — that the record shows that one of the standard pre-Mackie-Duluk top as the trial court termed it, to go on to the car immediately with no change at all.

If — if the Court is interested in this concept, I would invite attention to the District Court’s finding.

This appears at record page 39 and footnote 8 in which the trial court, who had observed these structures and who actually observed the petitioner Harold Shapiro install one of this snap fastener tops on the car, stated that it is interesting, this is starting in about the third line of footnote 8, it is interesting to note the defendant’s own efforts which shows that Mackie-Duluk cars could have applied to them without any structural change, by using snap button receptacles already on the car for the boot, a complete standard free Mackie-Duluk top with outside the two nose snaps.

In other words, the car owner and defendants and instead, did not have to subject themselves to replacing royalties if they did not want to and he continues in that claim.

The car itself is as I say, completely standard and once this new shape of fabric is removed for whatever reason and it is ordinarily not removed because it is more novel, with this position we take direct issue with Mr. Spritzer’s allegations.

Once the top fabric is —

Hugo L. Black:

Why is it removed?

Elliot I. Pollock:

It is removed ordinarily because it doesn’t look good.

Let me — let me — this — this is quite clear in the — in the court — in both courts’ findings.

The reason that people do replacements, if they do them, is because after a period of three or four years, the tops have become dirty or they have become faded somewhat.

They don’t look good.

It’s a question of appearance.

Hugo L. Black:

They worn out to a certain extent?

Elliot I. Pollock:

That’s quite true Mr. Justice Black, that’s quite true.

It’s quite true, but there are repair procedures available which can dress up these tops without requiring a complete top replacement and these are far simpler procedures which are shown in the record than actual top replacement.

There are commercial preparations available for staining these tops if they are faded.

They can be cleaned if necessary.

If the — if the stitching in certain portions of the steam has — of the top, has become faded, they can be sold.

Indeed, even if there’s a tear in the part of the top, the record shows that a panel of the top can be very easily be replaced without any difficulty and these are repair procedures with which we have no difficulty here.

Patentee is not trying to cover these at all.

He has no objection to such repair procedures, not only which are well-known in the industry but which Aro themselves, do in their own shops.

These are well-known repair procedures, but we say when you go further and for a profit motive induce someone to remove his entire top fabric and replace it with a very new fabric of this special shape, then you’re going far beyond what is normally considered a repair.

You are, if you will, destroying for your own purposes, the heart of the invention which is still perfectly good and functionally — functionally and replacing it for a permissible profit motive, if you will, a brand new structure of this special shape.

Hugo L. Black:

When you dispose of — suppose a man bought it and the car that he didn’t actually check on it or the color or something. —

Elliot I. Pollock:

Then it’s —

Hugo L. Black:

Brand new — brand new and then he wanted to get a new garment with a different color.

Elliot I. Pollock:

It is entirely —

Hugo L. Black:

Would that — would that violate this patent then?

Elliot I. Pollock:

We — it would violate the patent, if you put on a brand new top of this special shape but you need not do that.

It is not infringement for example, if you took off your old top and put on one of these non-infringing fabrics which you can easily do.

This was reflected by the Court of —

Felix Frankfurter:

Is it the nature of the fabric or its shape?

Elliot I. Pollock:

It’s its shape which is the heart of this thing.

Felix Frankfurter:

And Yet, you told us Mr. Pollack, from my understanding that if the shape is crucial to avoid the problems of preexistence.

Elliot I. Pollock:

That’s quite true.

Felix Frankfurter:

Will some other shape would do this thing about the same result —

Elliot I. Pollock:

No, it wouldn’t.

You’d have those problems.

But there’s nothing startling in this concept, if you will. Perhaps, if I may just elaborate on this point just a little bit.

Let us assume that — well, if the Court will reflect, it will see that there are many parts of a car which may require replacement from time to time during the life of a car.

For example, this Court will appreciate that if you buy a car after a period of time, you may wish to replace the tire on it or a spark plug or the muffler or gaskets, these things happen time and time again.

And even though you may have had a patent structure on the car originally, when you remove that structure from the car, you no longer have it.

Elliot I. Pollock:

And if you replace it with a new structure of that type, then obviously you should pay royalty and there’s nothing inequitable about this particularly where you have a choice.

Let us assume that you have a patented type spark plug.

It has certain advantages.

For some reason, it is gone.

After a period of time, you want a new spark plug.

Well, you have a choice at that time.

Do I want a patented spark plug with all the advantages or do I want the unpatented spark plug with — without some of these advantages?

If I want the patented spark plug, then presumably I’m going to pay the royalty which accrues to the patentees’ Yankee ingenuity in developing these advancements.

But there’s nothing startling about the concept of having a choice between a patented and unpatented component and —

Hugo L. Black:

And the — so if the spark plug are not patented, —

Elliot I. Pollock:

If the spark plug —

Hugo L. Black:

— that’s part of the automobile.

Elliot I. Pollock:

Unpatented parts are clearly replaceable, but I think that we must distinguish between an unpatented part in the normal context and a part which is unpatented albeit the heart of the patented combination.

In this contributory infringement field that we’re talking about, it is quite clear that in a technical sense, any one part of the combination is unpatented, if you will.

This was made quite clear in the legislative hearings and in the commentary preceding the Patent Act.

But the — the important thing is that there maybe some technically unpatented parts which nevertheless, mean a number of factual tests which Congress had set forth in the statute and these unpatented parts, unpatented in the sense that there is no patent covering it by itself, are nevertheless, the heart of the invention.

They are —

Felix Frankfurter:

Did I understand you to say that the shape couldn’t be patented?

Elliot I. Pollock:

I don’t see how, Your Honor.

Since this allegation has been made, I’ve tried to drop the claim on shape all by itself and I just can’t come up with the language.

Felix Frankfurter:

And yet this is crucial?

Elliot I. Pollock:

Quite so.

Felix Frankfurter:

In bringing to cars that for which the patent is granted.

Elliot I. Pollock:

Quite so.

This is precisely —

Felix Frankfurter:

Is it — is it then that — that although in of itself has no function in relationships, it’s the effective functioning aspect of the patent.

Is that your position?

Elliot I. Pollock:

Yes.

I — I may anticipate a little bit but just to later on, I will discuss a case of Morrin versus Robert White Engineering, a case decided in the Second Circuit, in which the invention in that case, was a new shape of boiler tube.

It’s akin to what we have here and yet in that case, the patentee claimed this new shape of boiler tube in combination with certain standard boiler parts and the Court itself recognized that this was done in order to describe the invention intelligently.

Elliot I. Pollock:

And this was the reason that this combination-formed patent was required by the Patent Office and eventually issued in that from.

But nevertheless, they’ve pointed out that the essence of the invention the true invented concept resided not in the standard parts because there was nothing new there.

They resided in this new shape of two.

Perhaps, if I get into this question of repair versus reconstruction which is very essential to an understanding of this case, we can appreciate exactly what the basis of the Court’s decisions were below.

The doctrine of repair versus reconstruction has been a part of our law for certainly at least a hundred years.

It was discussed in this Court’s decision in Wilson versus Simpson which was decided in 1850.

And this Court has discussed it in cases since then, cases such as Cotton-Tie versus Simmons, cases such as Leeds & Catlin versus Victor Talking Machine, cases such as Heyer versus the Duplicator Manufacturing Company, just to name a few.

It’s a doctrine which has been an inherent part of our law and it has been decided or it has been involved time and again in cases of all the Circuit Courts of Appeals.

Felix Frankfurter:

Does the doctrine appear in the discussions before the Committee?

Elliot I. Pollock:

Yes, it did.

Felix Frankfurter:

Enactment of the 1952 Act.

Elliot I. Pollock:

Yes, it did Your Honor.

Felix Frankfurter:

Do you give preferences to those discussions in your brief?

Elliot I. Pollock:

I — I can give a very — if you — if you would refer to page 64 of our brief, merely by example that occurs to me, note, footnote 10.

And this is a — a — an extract from a material which was presented to Congress by the Association of American Railroads, in which that association discussed this doctrine of repair versus reconstruction.

They were concerned that the law might be expanding it.

They appeared to have no objection to the law as it had been up to that time.

Felix Frankfurter:

It’s not referred to Committee report, is it?

Elliot I. Pollock:

In the Committee reports, it appears in the legislative — in the transcripts of the legislative hearings and as — this particular part is taken from an appendix to one of here.

Hugo L. Black:

You say page 64 of your brief.

Elliot I. Pollock:

Yes, Mr. Justice Black, in the footnote.

Oh, I’m sorry but my brief is the blue one.

Hugo L. Black:

Blue one, thank you.

Elliot I. Pollock:

And I will point out later under this question of possible liability of replacement manufacturers appeared throughout the hearings as well.

In the same section of my brief, I have made reference to various pages of the hearing.

Let us understand what this doctrine of repair versus reconstruction is about.

Many years ago, Dr. Oliver Wendell Holmes wrote a poem which the Court of Appeals referred to and I — and I refer to that poem with no intent (Inaudible) because it — it thoroughly illustrates the problem that we have here.

In that poem, The Wonderful One-Hoss Shay, Dr. Holmes discussed the deacon’s building of a shay which had no weakest part.

And he pointed out that after a hundred years of use these shays went to pieces all at once, all at once and nothing first, just as bubbles do when they burst.

That’s a quotation from the poem.

Elliot I. Pollock:

Well in our common knowledge, in our common everyday experience, things just don’t happen this way, neither a shays nor anything else we can conceive of, other than a bubble goes to pieces all at once.

In any arrangement of structure, in any structure which has more than one part, there’s always some weakest part and there’s going to be some part that is gone in advance of other parts for one reason or another.

Now the doctrine of repair versus reconstruction built on this common everyday realization that after a period of time, no matter what combination of structure might be sold, patented or otherwise, no matter what combination of structure maybe sold after a period of time, some parts of it are going to be gone for one reason or another.

And it may occur that the parts which are gone are so important to the true inventive concept, are in their nature, the heart of the invention or the vital component that the entire invention can be said to be destroyed even though some parts of the structure remained.

Let me give you some typical decided cases on this point here, I am going through them briefly because I think that it will illustrate the problem.

One of the classic cases in this field, a case which has been cited time and again in many decisions is the First Circuit case of Davis Electrical Works versus the Edison Electric Light Company, which was decided in the First Circuit in 1894.

In that particular case, Mr. Thomas Edison, who’s well known to all of us, invented a new filament for a light bulb.

Now, a new filament is meaningless in the abstract.

It has no functional utility.

It just can’t — can’t even be described, if you will, in accordance with the rules of the Patent Office all by itself, but this new filament was of a use in conjunction with a glass — glass envelop which surrounded it and with a socket for screwing it into a plug of sorts.

And therefore, in his claims, Mr. Edison got a combination claim, if you will, which included not only the new filament, but these standard background elements which were necessary to its operation.

He claimed in his claims, the glass envelope and the socket and certain electrical connectors, but there was no question in that case nor is there any in this case, that the true inventive concept was only in one part.

Now after a period of time, Mr. Edison’s bulb burned out, such things do.

Well, the only thing that went bad was the filament, the new part.

The rest of the envelope and the sockets and everything were perfectly good.

And in these circumstances we found that the defendant would gather up these bulbs and he would replace the attenuated carbon filament with a brand new filament of precisely the type that Edison had developed.

He did, if you will, replace only one component of the patented combination albeit in that case the heart of an invention, the true inventive concept.

And in that case, the Court of Appeals of the First Circuit, noting that the true test was entirely factual; noting that it was a question of ultimate fact to be decided by juries and the like.

In that case, the Court of Appeals of the First Circuit held that even though only one part of the combination was replaced, nevertheless, this was a reconstruction of the invention.

For it was a re-providing of the heart and essence of the invention.

Hugo L. Black:

Now, I’ve seen there are some photographs in here.

Could you point out the one that’s a photograph of this part that you are talking about — see it if you have a photograph of it.

Elliot I. Pollock:

Are you referring to the photographs in this large volume?

Hugo L. Black:

Yes, I just noticed there are a lot of photographs then —

Elliot I. Pollock:

Yes, there are — there are —

Hugo L. Black:

I’m wondering if —

Elliot I. Pollock:

If they appear on the large volume, unfortunately, none of them referred to it.

Hugo L. Black:

Do any of them show this —

Elliot I. Pollock:

None of them showed the fabric by itself.

Well —

Hugo L. Black:

How is it made?

How is the fabric made?

Is it a regular fabric that you buy?

Elliot I. Pollock:

The fabric — the actual material can be of various types.

We’re not primarily concerned with material here.

Theoretically, it could be an impregnated canvass of sorts or the latest developments and by far a superior development as reflected in the record, is certain vinyl plastic materials which have their seams electronically sealed to one another.

Hugo L. Black:

Well, in other words, the material itself (Inaudible) or the way it’s made has nothing to with what you’re talking about?

Elliot I. Pollock:

No, no.

We don’t care whether the fabric —

Hugo L. Black:

Well that one — when they make it, what do they do?

These people that are selling it that you claim are infringing your patent?

Elliot I. Pollock:

We claim that they removed the fabric completely from the old car when it need not be removed, when it can be repaired by other techniques.

We — we claim that they remove it at a time when it is still perfectly good functionally.

Hugo L. Black:

Why should you object to that?

Elliot I. Pollock:

Well, we don’t object —

Hugo L. Black:

(Inaudible) buy something that is patented?

He can’t change if he wants to —

Elliot I. Pollock:

He can change —

Hugo L. Black:

(Inaudible)

Elliot I. Pollock:

Oh yes, he can change.

Hugo L. Black:

That is nothing but a combination of patents on it, about elements that are non-patentable.

Elliot I. Pollock:

This is the – this is the — the essence of this doctrine of repair versus reconstruction, which I have been discussing namely that under some circumstances, the part which is replaced maybe of such vital significance to the invention that it cannot be permissibly replaced.

Hugo L. Black:

You buy a suite of clothes or are there ever any clothes patented?

Elliot I. Pollock:

I — I would imagine that there are design patents and suppose or —

Hugo L. Black:

Patents where they have this new fangled-thing they use instead of buttons?

Elliot I. Pollock:

I would expect that if we — well we have, let us say, a new zipper on the clothes, a new type of zipper, I would expect that even if that new zipper —

Hugo L. Black:

Suppose they use the old type of the zipper, but use the — also the old type of patent on the dresses?

Elliot I. Pollock:

I’m sorry Sir.

Hugo L. Black:

They use the pattern there, a rose pattern, they didn’t like in one of the places, they want to take it out.

Elliot I. Pollock:

They — there are certainly well — if they had certainly perfectly able to do that —

Hugo L. Black:

Do they go buy it or would they have to buy it from the person to whom — who had the patent on the dress?

Elliot I. Pollock:

They could buy it from any licensed source, I should think.

Earl Warren:

Buy it from whom?

Elliot I. Pollock:

Any licensed source.

(Inaudible)

Elliot I. Pollock:

Yes, they could.

Let — let’s take this case of a convertible top.

If a man doesn’t like his original top and removes it, and he is perfectly able to replace with another color if you will or with another fabric material if you will, which has a non-patented shape.

We have no objection to that.

Hugo L. Black:

But you’ve just said a while ago, shape doesn’t need to be patented.

Elliot I. Pollock:

Not by itself, not by itself.

Hugo L. Black:

You mean that —

Elliot I. Pollock:

Not because of anything that is non-patentable in shape, but merely because of semantic difficulties in trying to describe it and difficulties which are engendered by the Patent Office rules which therefore require that in order to completely describe what you’re talking about, you have to import these other background elements.

Hugo L. Black:

I don’t get that, if you mean language is not adequate to describe the shape that you don’t want patented?

Elliot I. Pollock:

I think that that may often occur.

I would have difficulty for example, in describing the color red, but if I were able to bring —

Hugo L. Black:

(Inaudible) you can go and picture the shape and they’re frequently drawn.

Elliot I. Pollock:

That’s true.

Hugo L. Black:

Is there a picture of the shape in your patent here?

Elliot I. Pollock:

Yes, there is.

Hugo L. Black:

That — that’s the only pictures that we have.

Elliot I. Pollock:

Well, that’s — that’s certainly a good picture of it.

If — if Your Honor will refer to figure 1 of the patent which is at 589.

Hugo L. Black:

I don’t think any about that.

Now, which part of that is this?

Elliot I. Pollock:

The fabric material is shown from looking — looking from the inside of the car toward the fabric, this shape here — you — you see the numeral 28?

Hugo L. Black:

At the top?

Elliot I. Pollock:

In — in figure 1, the numeral 28 below the — immediately above the bottom line of the figure that is a numeral 28, with the lead line there.

Hugo L. Black:

Yes, I see it.

Elliot I. Pollock:

There — there is a — that is a reference to a — this entire loose section of fabric which came down inside of the car deep enough to be permanently fastened.

Elliot I. Pollock:

And in side section, this appears in figure 2 on which we again have the numerals 28 and 38, showing this prolongation of fabric coming down into the car.

Tom C. Clark:

Can a dress patterns be patented or protected in any way?

Elliot I. Pollock:

Various parts of dresses; I would imagine if someone — well, the typical thing that occurs to me is of course various ladies’ undergarments are constantly being patented.

All sorts of changes are made on those. Dress patents or dress patterns, if you will, are commonly protected under the design patent law.

They are more ornamental than — well, they certainly have the utilitarian function — I don’t mean to say that they’re not functional, but commonly, the malady of the dress pattern is in it’s ornamentation and in the — in its new and ornamental aspect and these are protected under a different section of the patent laws, namely design patents.

Tom C. Clark:

Could you get a design patent on your top?

Elliot I. Pollock:

No, because one of the features of the design law is that there must be a distinction between ornamentation or something which is ornamental and something which is functional.

In this particular case, the important part of the fabric actually comes down into the — inside of the car and does not lend itself to the ornamentation of the top.

It would not ordinarily be seen by anyone viewing the car.

And therefore, under these circumstances, no design protection would be available.

It would be hidden from view, in normal view, sir.

Tom C. Clark:

Well, you have a little ornamental band around it, don’t you?

Elliot I. Pollock:

We don’t — we don’t, I’m — I’m sorry perhaps, I misunderstand your question correct me please Mr. Justice Clark.

Tom C. Clark:

On the outside of the top I have to have a horseshoe (Inaudible)

Elliot I. Pollock:

You’re talking about the shingle, perhaps.

Tom C. Clark:

(Inaudible) not as wide the surrey with a fringe on the top, but it’s a — it got a little fringe around the outside and makes it look a little bit more (Inaudible)

Elliot I. Pollock:

Well, ornamentation is not our prime purpose here.

It was a solution of this functional difficulty which I’ve described.

I don’t know the topic you have, I’m sure it’s quite attractive but it — nothing with this topic is concerned with.

Tom C. Clark:

It’s an Oldsmobile, a 1949 Oldsmobile.

[Laughter]

(Inaudible) leak in about since I had 11 years.

Elliot I. Pollock:

You say it’s a 1949 Oldsmobile?

Well, if it’s not even involved in this patent because the structure is identical – [Luaghter]

Tom C. Clark:

I’m happy to know that.

[Laughter] I wondered though, about five years ago, you know the weather up here in Washington was bad on the (Inaudible) when you have to park outside and I commenced gangs and leaks in mine and so I took it down, I saw some ads in the paper and I took it down to get it replaced rather than they said that they could sew some fabric over these holes that — that they thought it should be —

Elliot I. Pollock:

This is repair.

Tom C. Clark:

It wouldn’t be practical.

Elliot I. Pollock:

This is the —

Tom C. Clark:

Well, I put a new one would that be — I’ll assume when I got your top.

Tom C. Clark:

That would be a — an infringement wouldn’t it?

Elliot I. Pollock:

I would think so, yes.

Tom C. Clark:

Although my old top was worn out it leaked on me.

Elliot I. Pollock:

Well, as you have stated, it could be repaired, if you will.

It could be made functional again by other techniques than complete replacement.

Tom C. Clark:

Well, he said that they talked so much to put the new fabric door at the holes, so worn parts where you put it down and on — at the — had the tendency to crack, when the weather makes it leak.

Elliot I. Pollock:

I thought —

Tom C. Clark:

It would not be practical because the leak would come into the sewing the thread and also that it would cost so much to take the top off and — and sew it, would it cheaper for me to buy another top?

Elliot I. Pollock:

I think that if you went down to the Western Auto store, you would find that there are patch kits available.

The Pep Boys have them for 98 cents.

I think that —

You might as then allowed to go there.

Elliot I. Pollock:

Yes, you can do them yourself.

These are readily available in —

Tom C. Clark:

Can you buy a pattern of your top, a — a paper pattern like I would’ve addressed, if I went to dressing making.

Elliot I. Pollock:

I — I don’t know where they would be available, I’ve never considered —

Tom C. Clark:

Would that be an infringement?

Elliot I. Pollock:

Just the pattern?

Oh no — no, don’t just the pattern.

Felix Frankfurter:

Go and copy it from the patent office —

Elliot I. Pollock:

Yes, I mean, you could copy it very easily from the pattern, you know.

Earl Warren:

Would you make any — any distinction at all between the case where the top is changed for aesthetic reasons or on the other hand, because it’s worn out or —

Elliot I. Pollock:

Yes, yes, we do.

Earl Warren:

Or because the — the owner thinks it’s worn out?

Elliot I. Pollock:

Yes, we do.

I think that as I developed this doctrine repair versus reconstruction, you will see Mr. Chief Justice that one of the considerations which courts have given, one of the factors which they considered, is that where a part is replaced which is not truly worn out and then replacement is done for some reason other than legitimate repair.

William J. Brennan, Jr.:

Then there is infringement in such cases —

Elliot I. Pollock:

No, this is just one factor.

There are a number of factual criteria which have been developed in case after case.

And none of these criteria is controlling by itself, but this is just one and I — and I will be getting immediately to all of these criteria which the courts do consider.

Felix Frankfurter:

And they must all be satisfied?

Elliot I. Pollock:

No, they do not.

This is a question of common sense the courts have said.

This Court, itself, in Heyer versus Duplicator, said that the real test is common sense applied to the specific facts.

All of these cases —

Felix Frankfurter:

Common sense with reference to what other criteria on or criteria.

Elliot I. Pollock:

That’s right.

Felix Frankfurter:

But what are the alternates, what is — you can’t — you got — you say common sense with the reference to what?

Elliot I. Pollock:

To the — I would — would you like me to get into some of these —

Felix Frankfurter:

You know by this case and I don’t.

Earl Warren:

I like to — I like to hear your question asked — answer that —

Elliot I. Pollock:

I’m sorry, Mr. —

Earl Warren:

You can answer it now.

Felix Frankfurter:

I want to know with reference to what?

Elliot I. Pollock:

To what criteria?

Felix Frankfurter:

To what the common sense of the judgement must be exercised.

Elliot I. Pollock:

The — the — this Court in Heyer said, common sense applied to the specific facts of each case.

Felix Frankfurter:

But — but that —

Elliot I. Pollock:

Now these facts —

Felix Frankfurter:

That must be judged by some standard.

Elliot I. Pollock:

That’s quite true.

Felix Frankfurter:

They can’t be judged by themselves?

Elliot I. Pollock:

That’s quite true, it doesn’t matter that the patentee has read hair.

This is completely beside the point.

Felix Frankfurter:

Alright, —

Earl Warren:

Well, I’d like to — excuse me.

Hugo L. Black:

I just tried to say that I understand if you can patch it but you can’t buy a new one.

Elliot I. Pollock:

Yes sir, that’s quite true.

And you can buy a new top with a different shade.

Hugo L. Black:

Have it patched by somebody, if you could patch it all —

Elliot I. Pollock:

Absolutely — absolutely.

We have no objection to any of that.

Earl Warren:

Who fixes that standard?

Elliot I. Pollock:

As I say, there had been a number of cases in this repair versus reconstruction field which have laid down among others — I will — I will not go through some of these criteria.

Actually, before the Court of Appeals below, the partners to this case argued some 15 criteria, some 15 factual circumstances which were developed in the record but here are some of the typical kinds.

Potter Stewart:

What — what the courts have said, common sense is directed to as to the basic question on whether or not, its reconstruction or repair.

Isn’t that right?

Elliot I. Pollock:

Yes.

Potter Stewart:

In answer to Justice Frankfurter’s question?

Elliot I. Pollock:

That’s right, that’s right.

Potter Stewart:

That’s the issue, which is not —

Elliot I. Pollock:

That is true, sir.

And that the courts have consistently said that this is a factual issue, it’s a question of founded fact to be decided on the basis of certain subsidiary facts and they have gone further and lay down in case after case, some of the subsidiary facts, which they think are important.

They say for example that if we can examine the structure and determine that it does have a heart, a heart of the patented invention and not all combinations do, but if there is some significant new part —

Felix Frankfurter:

The filament and the Edison bulb.

Elliot I. Pollock:

The filament of the Edison bulb, then replacement of such a heart of the invention tends to indicate reconstruction rather than — rather than repair, this is just one criterion.

Felix Frankfurter:

When this document originate?

Elliot I. Pollock:

Certainly, it was in existence in 1850 when this Court spoke of it in Wilson versus Simpson.

Felix Frankfurter:

The Court in that case, acknowledged the doctrine?

Elliot I. Pollock:

Quite so.

Felix Frankfurter:

In terms, in terms —

Elliot I. Pollock:

Yes, yes.

The very question there was whether or not, by replacing certain cutter knives, there was a repair or a reconstruction of a planing machine.

Felix Frankfurter:

And how many cases since the Wilson case has this Court reaffirmed or acknowledged or assumed the existence by deciding cases on its assumption.

Elliot I. Pollock:

In a — in the — in the next case that I’ve been able to find is Cotton-Tie versus Simmons which is reported at 106 U.S. 89.

The Court spoke of the — of this same doctrine in Leeds & Catlin versus Victor Talking Machine which is reported at 213 U.S. 325.

This Court also referred to the doctrine in Heyer versus Duplicator, Mr. Holmes’ decision and that appears in 263 U.S. 100.

Felix Frankfurter:

That’s the latest case in which reference is made to the doctrine?

Elliot I. Pollock:

It’s the latest case I have reference to here.

Felix Frankfurter:

263 what?

Elliot I. Pollock:

263, 100.

Felix Frankfurter:

100, that’s what — that about 1923?

Elliot I. Pollock:

Yes, yes.

Felix Frankfurter:

Now from 1923 down to date, your opinion in this Court has — had occasion or did in fact because of the (Inaudible) is that right

Elliot I. Pollock:

None that I’ve been able to find.

Felix Frankfurter:

But you say that when Congress came to codify the patent law —

Elliot I. Pollock:

Yes.

Felix Frankfurter:

In 19 — which eventuated in the Act of 1952 —

Elliot I. Pollock:

Yes.

Felix Frankfurter:

— that’s codification was a clarification of the doctrine that you say — is illustrated by those cases?

Elliot I. Pollock:

Yes.

Felix Frankfurter:

Is that your proposition?

Elliot I. Pollock:

Yes, yes.

It — it was certainly a part and an important part of this case law and I might invite attention just to digress for a moment to the Government’s brief.

This is the little gray brief which they have filed.

At particularly page 8 of that brief, in which the Government states that Section 271 (c) and this is the contributory infringement section of the statute, that this section defines contributory infringement in terms of direct infringement.

Felix Frankfurter:

In terms of what?

Elliot I. Pollock:

In terms of direct infringement and then they go on to say that this definition of direct infringement as it appears in Section 271 (a) is declaratory and I quote, “Left intact the entire body of case law on direct infringement.”

And we must understand that this doctrine of repair versus reconstruction is a direct infringement question.

I believe — I don’t believe that there is any —

Felix Frankfurter:

Can’t have contributory infringement unless you have direct infringement.

Elliot I. Pollock:

That is true.

Felix Frankfurter:

So in this case, you haven’t got contributory infringement at all, you have merely direct infringement from your point of view.

Elliot I. Pollock:

No, we have direct infringement when —

Felix Frankfurter:

(Inaudible)

Elliot I. Pollock:

When some caught —

Felix Frankfurter:

(Inaudible)

Elliot I. Pollock:

Yes, sir.

Felix Frankfurter:

As did — as — as I get your argument, you have merely directed infringement not contributory reasons.

Elliot I. Pollock:

No, we — we have both, Your Honor and —

Felix Frankfurter:

Now explain that.

Elliot I. Pollock:

Yes.

When these people in their own trim shop, the — they maintain a facility for installing tops.

When they actually put these tops on cars themselves, they are direct infringers.

However, they also supply them to other trimmers to do that job and when these other people do it, they’re the direct infringers when these people have are the contributory infringers.

There are both aspects in the case.

Felix Frankfurter:

But the actual — what is physically done in violation of your claimed patent right is the same whether direct infringers or the contributory infringer does it.

Elliot I. Pollock:

Yes, except that the contributory infringer requires a sale of the part and that’s the case.

I — I would like to continue with some of these cases under repair versus reconstruction.

I have discussed this Thomas Edison case, there’s also the case of Morrin versus Robert White Engineering, which was decided at the Second Circuit in which, this is the case I mentioned before, in which we had certain specially shaped boiler tubes which were — described in conjunction with the rest of the boiler to describe these tubes intelligently and in that case, the only part that was replaced again were these specially shaded tubes.

And the Court said in that case that this replacement of the tubes, just part of the combination was in fact a furnishing of a new boiler essentially reconstructed in all of its novel features and this they said was reconstruction and infringement.

In the case of Automotive Parts versus Wisconsin Axle, which is a Sixth Circuit case, we again had an automotive part case and the General Electric versus Preferred case has been cited by Mr. Spritzer, but this is not — I don’t believe that this shows that just because we have an automobile part, that necessarily means that in any part is replaceable.

Felix Frankfurter:

Let me ask you about Edison’s filament?

Elliot I. Pollock:

Yes, sir.

Felix Frankfurter:

Suppose that somebody manufactures Edison’s filaments and sells those filaments of children’s play thing or for constructing nice Japanese (Inaudible), would that be an infringement of anything?

Elliot I. Pollock:

No, it would not be.

Felix Frankfurter:

So the — if the infringement in that case is valid, derived from the use made in producing the result which is a functional entity.

Elliot I. Pollock:

That’s quite true.

Felix Frankfurter:

Patent — is that your point?

Elliot I. Pollock:

Yes and the contributory infringement derives from the intent with which the article is originally sold.

In this case for example, if you will examine petitioner’s question one, you will find that he concedes in this question that the parts here involved were especially cut and intended for use in the patented combination.

This is an essential question of fact.

This intent must be determined from all the facts and circumstances of the case and it is an intent which is definitely spelled out on the statute.

Felix Frankfurter:

But if I’m a collector of shapes and just — and buy these things from the present —

Elliot I. Pollock:

Yes and if these people —

Felix Frankfurter:

And just buy them in shapes in — in a warehouse where I have it.

Elliot I. Pollock:

Then there has been no direct infringement and therefore, no contributory infringement.

Felix Frankfurter:

Make no use of them at all, you just buy them.

Elliot I. Pollock:

That’s quite —

Felix Frankfurter:

From somebody not the patentee.

Elliot I. Pollock:

That’s right and if these people can show that you never installed that top that would be a perfect defense.

Earl Warren:

I’ve — I’ve been wondering why you say that filament in Edison’s lamp was the — was the only functional thing in it.

Elliot I. Pollock:

Well, I didn’t say that.

The Court said it, Your Honor.

I believe that the — the Court in that First Circuit case, stated — if — if you will look at our brief from page 51, we have quoted from a Tenth Circuit case, Williams versus Hughes Tool Company, which was decided shortly before this reenactment by Congress.

And in that particular case, the Court quoted at length from various other cases and you’ll find at the top of 51, the top of our brief, 51, they spoke of this Davis’ case.

They said that the Court held that the replacement of an attenuated carbon filament one element in the combination was reconstruction and not permissible repair because all of the elements other than the filament were old and the filament had its use and the relation described was the new element in the combination and produced the improved results.

Earl Warren:

Did they have an electric lamp before —

Elliot I. Pollock:

Oh, yes.

This was not the basic electric lamp invention.

This was merely a new filament.

The lamps were known before that, just as convertible cars were known before our invention.

Tom C. Clark:

Automatic Convertible.

Elliot I. Pollock:

Yes, but not with a — an Automatic Seal in the Rear Quarter.

Tom C. Clark:

You mean, you could — you wouldn’t as one man you know, talked about the one main top as well.

Elliot I. Pollock:

I’m talking about the — the top that — well, in 1949, I have assume you have a power to assist Mr. Justice, so that you can press a button and your top comes up.

But then, I would assume that you have to get out of your car and do something in the Rear Quarter.

Well, I don’t know what structure you have.

Felix Frankfurter:

You didn’t have your patent.

[Laughter]

Elliot I. Pollock:

Are you sure you drive a 1949?

Tom C. Clark:

Well and I used to have one and they call one man, it took about six men (Inaudible) one man to put it down run though as an automatic before a little a lever, first (Inaudible) over the windshield.

Elliot I. Pollock:

Put a little laver?

Tom C. Clark:

Put that back and when you — I could get out and put a cover it, I don’t ever do that thing.

Felix Frankfurter:

But you want to produce it, don’t you?

Elliot I. Pollock:

It sounds like a wonderful idea.

I don’t — I don’t know — I — I had the impression that in 1949, the General Motors cars had sort of a cup and channel arrangement in the rear quarter that you got out back of your rear windows and actually snapped the flap material around the cup.

Well this was my impression.

Tom C. Clark:

Oh, I have a car that goes all the whole thing when it gets down but I’d already put mine up. Your patent is on the automatic feature in the —

Elliot I. Pollock:

Just on — on a special — well, on this top which permits this Automatic Sealing on the Rear Quarter, I frankly don’t know what your structure is.

Tom C. Clark:

Which means yours is — your patent cover the fact that you don’t have to do it manually, you can do it —

Elliot I. Pollock:

Oh, no.

This had nothing to do with the motor which raises it or lowers or anything like that.

Tom C. Clark:

But it does have to deal with the mechanism that makes go up and down.

Elliot I. Pollock:

No, no, it does not.

No, that — that in itself is old.

We’re not trying to cover anything like that.

Hugo L. Black:

If what you — that’s the reason I asked for the (Inaudible).

I — I haven’t yet quite understood it if it has been so important as what you have done (Inaudible) or you had to get out, I’ve noticed that many times, these sides or that.

Elliot I. Pollock:

That’s right, the Rear Quarter section.

Hugo L. Black:

You’ve made that through its sounds you don’t have to do this.

You have —

Elliot I. Pollock:

You don’t have to do that anymore.

Now actually —

Hugo L. Black:

It’s a solid thing instead of one where you have flaps and have to be fastened on.

Elliot I. Pollock:

That’s right.

Hugo L. Black:

Is there anything else that you’ve done, except that?

Elliot I. Pollock:

That is the heart of the invention and it’s — it’s a little bit more complex that you might imagine simply because, let us picture when you snap this top and — snap these buttons on, when you lower your top they will rip loose.

Hugo L. Black:

But you fixed it —

Elliot I. Pollock:

So that.

Hugo L. Black:

As long — as long — another shape wrecked can be sewn.

Elliot I. Pollock:

Exactly, that’s my (Inaudible)

Hugo L. Black:

Therefore, you got rid of the snaps.

Elliot I. Pollock:

That’s quite so, exactly.

Hugo L. Black:

And that’s it.

(Voice Overlap) to discover.

Elliot I. Pollock:

That for the first time, we have — first time we have what is in the title namely a folding top with an Automatic Seal in the Rear Quarter rather these manual seals.

Hugo L. Black:

What you mean by Automatic Seal, you don’t mean the automatic operation with the top.

Elliot I. Pollock:

No, I mean, you don’t have to get out of your car and do anything of that —

Hugo L. Black:

You mean that — that it — without turning in the snap, if it starts to rain, you can put that down, you don’t have to turn in the snaps but it’s a solid cover.

Elliot I. Pollock:

Absolutely.

Hugo L. Black:

And that’s the whole thing, isn’t it?

Elliot I. Pollock:

That is the thing.

Yes, that is.

Felix Frankfurter:

Has this patent ever been challenged in any — any — in any litigation, in any adjudicated litigation?

Elliot I. Pollock:

Only in this case, Your Honor.

Felix Frankfurter:

Well I thought you answered Justice Harlan the validity of the patent is not in controversy.

Elliot I. Pollock:

I say that the time is shortly up.

Felix Frankfurter:

(Inaudible)

Elliot I. Pollock:

I say that yes.

I say, yes, it’s quite so.

I say that the validity of the patent was challenged before the trial court.

The trial court found the patent valid, found it to be and I quote, “A substantial and enlightened step” and no validity question was ever presented to the Court of Appeals (Voice Overlap) and it’s not presented here.

That’s right.

Hugo L. Black:

And many have presented here, isn’t it?

Elliot I. Pollock:

No, no.

Validity is not an issue here.

Just to continue, there were a great number of factors unfortunately a — a great number of criteria which had been developed in the case law to determine whether something is a repair or reconstruction.

We have mentioned these at some length in our brief and the interesting thing is that under the specific facts of this case, all of these criteria are met by defendant’s particular operations.

We have in this case ample support for the ultimate findings of fact below that defendant reconstructed rather than merely repaired.

Now, I would like to go into the Government’s argument in the very few minutes that I have remaining here.

The Government states, as I understand their position, that any worn out part should be replaceable.

I don’t believe that that applies to the facts in this case simply because the parts here when replaced, are not worn out.

And this is a — a criterion in which they assumed in their test which is not here present.

John M. Harlan II:

Mr. Spritzer, as I understood, I have said that the District Court regarded that as immaterial factor.

Elliot I. Pollock:

No well, the — the District Court pointed out that the conditions of replacement are ordinarily, situations in which we have superficial wear.

This was an expressed finding.

And the Court of Appeals noted that replacement is made for conditions of appearance where questions of appearance but that, if a person is not too fastidious as to appearance, he doesn’t have to replace his top even then.

So that the top is not worn out insofar as a person is not too fastidious as to appearance is concerned.

Hugo L. Black:

It’s like the difference in a man who has the car and had lot of scratches on them.

Hugo L. Black:

Some of them are fastidious and we get it painted, some of them don’t.

Elliot I. Pollock:

Exactly.

Before this Court, the Justice Department argues what we believed to be arguments essentially similar to those presented to Congress.

Now, we do feel that Congress reenacted the law in 1952, this law of repair versus reconstruction.

Felix Frankfurter:

Then it applies to me what you’ve just said essentially with the Government hearing these arguments before the Congress.

That implies to me that that was actually prevented to Congress issued as the validity of the difference between repair and reconstruction.

Elliot I. Pollock:

No.

I — well what I —

Felix Frankfurter:

What do you mean?

Elliot I. Pollock:

Perhaps, I can verify that (Voice Overlap).

I would understand that the Government’s argument as such that they say that under Section 271 (c), a replacement part manufacturer should not be liable under any circumstances, if he is just selling a replacement part.

Felix Frankfurter:

Well that means that — that they rule out the doctrine of repair versus reconstruction.

Elliot I. Pollock:

This in effect, would be the result of the argument presented here.

Felix Frankfurter:

That’s where you say therefore, when you said a minute ago that the Government in effect, is making the argument here which didn’t prevail before Congress in process of enactment, I will take my suggestion that that must imply, that the doctrine of replacement versus repair was before Congress in such an effective and significant way that the Act must be construed to be declaratory of the doctrine theretofore in existence.

Elliot I. Pollock:

I believe that it was and I believe that you pointed out my brief.

Hugo L. Black:

Isn’t the question of what does (Inaudible)

Elliot I. Pollock:

I don’t believe that there is a question with that the court below applied the correct criteria and applied them correctly.

Hugo L. Black:

That’s the issue.

That’s the issue and maybe that is a (Inaudible)

Felix Frankfurter:

What your thing even for at least you give him four cases, that the — if I look at these three cases, 106, 213, 263 and (Inaudible), I will find that the matter of fair reading of English that this Court acted on and enunciated the doctrine of repair versus reconstruction.

Elliot I. Pollock:

I believe that’s quite correct.

Yes.

Hugo L. Black:

Then it’s what that means, it’s you repair or you would reconstruct it.

Elliot I. Pollock:

That’s true.

Felix Frankfurter:

The comes the —

Hugo L. Black:

Then decide what reconstruction means.

Elliot I. Pollock:

That’s true.

And if I may elaborate just for a moment, you will find that in Leeds & Catlin for example, in Leeds & Catlin for example and in Cotton-Tie versus Simmons, this Court in both cases, found reconstruction through — through replacement of only one part of the combination.

Earl Warren:

Is there any flexibility in the permissible repair doctrine, so far as the type of patent is concerned in this respect?

If you have a combination patent, one of the– one of the elements in the patent is in all likelihood to become obsolete or to — or to calling this repair before the rest of it does?

Earl Warren:

Do you hold them — do you hold the owner to the same degree of — of — under the permissible repair doctrine that you would where they were all of the same type of material and — and one is part is likely to wear out as another or some of your, some of these is a metal, some of it is fabric and the fabric we know is very likely to — to wear out before the length of a — of a car and the metal parts are — are not likely to do that, is there any room for distinction there?

Elliot I. Pollock:

Yes, there is — yes there is — if I may answer that question.

Earl Warren:

Yes, will you please.

Elliot I. Pollock:

First of all Mr Chief Justice, I don’t believe that just because as part as made of fabric, it necessarily has a very short life, If you will consider —

Earl Warren:

No but I want to take — I — I want to assume that it does.

Elliot I. Pollock:

Alright, this Court — this Court in Wilson v. Simpson, said first of all, that perishability is not a test to be applied in repair versus reconstruction.

This basic case in Wilson v. Simpson said —

May I have that cloth please?

Elliot I. Pollock:

Said I have a (Inaudible) edition copy here, said that “The right of the assignee to replace the cutter knife is not because they are perishable materials, but because of certain considerations of intent.”

In that case therefore, they said that perishability, the mere fact that something wears out in advance on another part is not the important thing and this Court in Leeds & Catlin said substantially the same thing and I — in — in that case they said that, “No licence should be implied merely because of a difference and duration of various parts of the combination.”

Earl Warren:

Well, did they — did they permit the replacement of those knives?

Elliot I. Pollock:

In that particular case?

Earl Warren:

Yes.

Elliot I. Pollock:

Under the fact and circumstances of that case, they construed the intent of the vendor as being one in which replacement was permitted.

In Leeds & Catlin, they said, the replacement of that part in that case would be reconstruction and not permitted and the — the cases are dependent solely under different facts.

Felix Frankfurter:

Would you mind adding to what the explanation you have just made, by giving the details from which the Court derived intent with the (Inaudible) that the user may rephrase the part.

Elliot I. Pollock:

Yes, I have here —

Felix Frankfurter:

What seems to me to be asking anything of the courts to make that (Inaudible)

Elliot I. Pollock:

I have here the case of Wilson v Simpson.

Some of the characteristics which this Court —

Felix Frankfurter:

Bearing in such —

Elliot I. Pollock:

Considered was first of all.

Felix Frankfurter:

That the intent of the patentee was that I could be replace that —

Elliot I. Pollock:

That’s right, that’s right.

Now, here are some of the factors which appear on the decision.

They said first of all that the part that that very short life, 60 to 90 days and that the machine itself had a life of years.

In this particular case of course, the fabric itself lasts for years.

In that particular case, another factor which they considered was that the parts were so arranged that only one particular type of part could be replaced thereon.

And they said that, obviously, if the parts remaining when this part is gone are so arranged that you could only put one part on, then the patentee must’ve intended that that’s part you put back.

Of course those circumstances are present here.

Elliot I. Pollock:

The parts are so arranged that you can put many different things on them.

That this Court went in to point out that in — in question — in — in resolving this question of intent, that they said that there are other parts of the combination, which may be put into the combination with no intent that they’d be replaced and that in those parts, replacement is not permitted.

Felix Frankfurter:

So then — so that’s what you call intent or what they call intent, case to be derived not of an extraction to the mental state of somebody —

Elliot I. Pollock:

No.

Felix Frankfurter:

But from the structural and functional arrangement of — of —

Elliot I. Pollock:

The parts.

Felix Frankfurter:

Just the combination.

Elliot I. Pollock:

Quite, that’s so, yes.

Thank you.

Earl Warren:

Mr. Wolf.

David Wolf:

Mr. Chief Justice and may it please the Court.

At first, I like to clarify a few — few of the facts involved in this case.

The fabric shape itself was not new.

The Court specifically found that, the District Court, where it’s set at page 36 to the record (Inaudible)

Hugo L. Black:

Why?

David Wolf:

— brought the fabric from outside the tunnel of the Rear Quarter —

Hugo L. Black:

Page, what are you reading from?

David Wolf:

36, brought the fabric from outside the tunnel with the Rear Quarter inside.

This in itself was not new.

I’d also like to remark that it’s quite remarkable that the respondent never once mentioned during his entire presentation of the wiper arm.

The wiper arm, when it — this case was presented to the District Court, was argued as a very essential element.

As a matter of fact, they — testimony in page 171 of the record, when I was cross-examining the expert of the respondent speaking about the various parts that went into this invention.

I said, you mean to say that the tonneau and the fabric and the wiper arm and the folding bows are all necessary in this?

Answer, yes, without all those parts, you don have a complete operating unit.

I’d also like to point out that there are other spots in the record which clearly indicate this.

I’d like to refer the page 26 of the record which indicates that the respondent’s contentions with respect to wearability were disregarded by the trial court.

I’d also like to point out that on the — that with respect to the cases the respondent relies upon, there is not one case except Leeds & Catlin that was decided by this Court and Leeds & Catlin was specifically overruled in the (Inaudible) case and that was before Congress when decided the statute.

The — the responded has also indicated that he couldn’t claim the fabric per se or I believe that I could orally state a claim right now but to claim that fabric per se if — if we had to, but Leeds & Catlin perhaps is not (Inaudible), is not necessarily (Inaudible) in view of Special Equipment versus Coe, which clearly indicated, the one could claim as a sub-combination, a single element.

I repeat that there is not one case to my knowledge including the Davis case which really held that a single component could be monopolized and when that component was merely one component of (Inaudible) combination.

Finally, I’d like to indicate that we believe there are number base — bases upon which this case could decided.

David Wolf:

We believe the case should be decided on the basis of misuse because this respondent has been substantially — this petitioner as been substantial injured by this (Inaudible) case.

And we believe that’s — if this case is decided on the grounds of misuse, the — the petitioner will then have the opportunity of trying to recover of some of the damages which it has sustained.

It had — its credit has been completely tied up for several years because of the injunction.

There had been attachments on the business, all the working capital, the personal homes of the individuals.

This is just the sort of thing which the antitrust laws were designed to avoid.

This was a business.

It was 35-years old.

People that were running it had been making fabrics, cutting them in substantially the same manner to (Inaudible) the automotive trade of many years and this patent comes along and the combination patent is now used to try to stop this business which should — which had been continuing for these many years.

Thank you.