1. The owner of a system patent may not use it to secure a
limited monopoly of an unpatented device employed in practicing the
invention, even though the unpatented device is itself an integral
part of the patented system. P.
320 U.S. 665.
2. In a suit for infringement of a combination patent, misuse of
the patent to protect an unpatented element from competition is a
defense available to a contributory infringer.
Leeds &
Catlin Co. v. Victor Talking Machine Co. (No. 2), 213 U.
S. 325, limited. P.
320 U. S.
668.
3. Exercise by an equity court of its discretion to withhold
relief from a patentee who has misused his patent to secure a
limited monopoly of unpatented material cannot be foreclosed by the
failure of the defendant to interpose that defense in earlier
litigation to which the alleged infringer was privy. P.
320 U. S.
670.
4. A judgment in a suit for infringement of a patent does not
bar a claim based on § 4 of the Clayton Act which could have been,
but was not, asserted as a counterclaim in the prior suit. P.
320 U. S.
671.
Where the second cause of action between the parties is upon a
different claim, the prior judgment is
res judicata not as
to issues which might have been tendered, but only as to those upon
the determination of which the finding or verdict was rendered. P.
320 U. S.
671.
5. A counterclaim based on § 4 of the Clayton Act may, under the
Rules of Civil Procedure, be asserted in a patent infringement
suit. P.
320 U. S.
671.
133 F.2d 803 reversed.
Certiorari, 319 U.S. 737, to review a decree which affirmed in
part and reversed in part a decree of the District Court, 43 F.
Supp. 692, in a patent infringement suit.
Page 320 U. S. 662
MR. JUSTICE DOUGLAS delivered the opinion of the Court.
This suit was brought by respondent, Mid-Continent Investment
Co., against petitioner, Mercoid Corporation, for contributory
infringement of the Cross combination patent No. 1,758, 146, issued
May 13, 1930, for a domestic heating system. Mercoid, in its
answer, denied contributory infringement and alleged that
Mid-Continent should be barred from relief because it was seeking
to extend the grant of the patent to unpatented devices. The
alleged improper use of the patent was also the basis of a
counterclaim filed by Mercoid in which it was averred that
Mid-Continent and its exclusive licensee under the patent,
respondent Minneapolis Honeywell Regulator Co., who was brought in
as a party plaintiff, had conspired to expand the monopoly of the
patent in violation of the antitrust laws. Mercoid asked not only
for declaratory relief, but for an accounting and treble damages as
well. The District Court found that Mercoid did not contribute to
the infringement of the Cross patent; that respondents had
conspired to establish a monopoly in an unpatented appliance beyond
the scope of the patent and in violation of the antitrust laws, and
that respondents were in no position to maintain the suit because
of that conspiracy. Mercoid was granted an injunction, but its
prayer for damages was denied. The Circuit Court of Appeals
affirmed the judgment of the District Court in disallowing
damages
Page 320 U. S. 663
under the counterclaim. In all other respects, it reversed that
judgment, holding that Mercoid was guilty of contributory
infringement under the rule of
Leeds & Catlin Co. v. Victor
Talking Machine Co., No. 2, 213 U. S. 325, and
that
Carbice Corp. v. American Patents Corp., 283 U. S.
27, and
Leitch Mfg. Co. v. Barber Co.,
302 U. S. 458, did
not bar recovery as the District Court had thought. 133 F.2d 803.
The case is here on a petition for a writ of certiorari which we
granted because of the public importance of the questions
presented.
The controversy centers around the license agreement between
Mid-Continent and Minneapolis Honeywell. By that agreement
Minneapolis Honeywell received an exclusive license to make, use,
sell, and to sub-license others to make, use, and sell the Cross
combination patent No. 1,758,146. The royalty payments under the
license, however, were to be based only upon sales of the
combustion stoker switch which was an element of the combination
patent embodied in the patented article, but which was itself
unpatented. The license agreement was construed by the Circuit
Court of Appeals to mean that the royalty payments were to be made
only on switches used for fire maintenance purposes under the Cross
patent. And Minneapolis Honeywell in advertising its stoker
switches stated that the "right to use" the Cross system patent was
"only granted to the user" when the stoker switches of Minneapolis
Honeywell were purchased from it and used in the system. Neither
Mid-Continent nor Minneapolis Honeywell manufactures or installs
heating systems under the Cross combination patent. There was ample
evidence to sustain the findings of the District Court that
respondents endeavored to use the license agreement so as to
prevent the sale or use of combustion stoker switches in these
heating systems unless they were the switches made by Minneapolis
Honeywell and purchased from it or its sub-licensees.
Page 320 U. S. 664
The patent is a combination or system patent, covering a
domestic heating system which comprises three main elements -- a
motor driven stoker for feeding fuel to the combustion chamber of a
furnace, a room thermostat for controlling the feeding of fuel, and
a combustion stoker switch to prevent extinguishment of the fire.
The room thermostat functions to supply, or discontinue the supply
of, heat by closing or then opening the circuit to the stoker motor
at the required temperatures. The combustion stoker switch, or
holdfire control, is responsive to a low temperature in the furnace
causing the stoker to feed fuel so as to prevent the furnace fire
from going out. The control of the combustion stoker switch is said
to be effective in mild weather when the room thermostat may not
call for heat for a considerable period.
Mercoid, like Mid-Continent and Minneapolis Honeywell, does not
sell or install the Cross heating system. But the Circuit Court of
Appeals found that Mercoid manufactured and sold combustion stoker
switches for use in the Cross combination patent. And we may assume
that Mercoid did not act innocently. Indeed, the Circuit Court of
Appeals said that it could find no use for the accused devices
other than in the Cross combination patent. And it assumed, as was
held in
Smith v. Mid-Continent Inv. Co., 106 F.2d 622,
that the Cross patent was valid. But, though we assume the validity
of the patent and accept fully the findings of the Circuit Court of
Appeals, we think the judgment below should be reversed.
Ever since
Henry v. A. B. Dick Co., 224 U. S.
1, was overruled by
Motion Picture Co. v. Universal
Film Co., 243 U. S. 502,
this Court has consistently held that the owner of a patent may not
employ it to secure a limited monopoly of an unpatented material
used in applying the invention.
Carbice Corp. v. American
Patents Corp., supra; Leitch Mfg. Co. v. Barber Co., supra;
314 U. S. S.
665� Co. v. G. S. Suppiger Co.,
314 U.
S. 488; B. B. Chemical Co. v. Ellis,
314 U. S. 495. In
those cases, both direct and contributory infringement suits were
disallowed on a showing that the owner of the patent was using it
"as the effective means of restraining competition with its sale of
an unpatented article." Morton Salt Co. v. G. S. Suppiger Co.,
supra,@ p.
314 U. S. 490.
The Court has repeatedly held that to allow such suits would be to
extend the aid of a court of equity in expanding the patent beyond
the legitimate scope of its monopoly. It is true that those cases
involved the use of the patent for a machine or process to secure a
partial monopoly in supplies consumed in its operation or
unpatented materials employed in it. But we can see no difference
in principle where the unpatented material or device is itself an
integral part of the structure embodying the patent.
The grant of a patent is the grant of a special privilege "to
promote the Progress of Science and useful Arts." Const., Art. I, §
8. It carries, of course, a right to be free from competition in
the practice of the invention. But the limits of the patent are
narrowly and strictly confined to the precise terms of the grant.
Ethyl Gasoline Corp. v. United States, 309 U.
S. 436,
309 U. S. 456;
United States v. Univis Lens Co., 316 U.
S. 241,
316 U. S. 251.
It is the public interest which is dominant in the patent system.
Pennock v.
Dialogue, 2 Pet. 1;
Kendall v.
Winsor, 21 How. 322,
62 U. S. 329;
Adams v.
Burke, 17 Wall. 453;
Motion Picture Co. v.
Universal Film Co., supra, pp.
243 U. S.
510-511;
Morton Salt Co. v. G. S. Suppiger Co.,
supra; United States v. Masonite Corp., 316 U.
S. 265,
316 U. S. 278.
It is the protection of the public in a system of free enterprise
which alike nullifies a patent where any part of it is invalid
(
Marconi Wireless Co. v. United States, 320 U. S.
1,
320 U. S. 58,
and see General Electric Co. v. Wabash Corp., 304 U.
S. 364,
304 U. S. 372)
and denies to the patentee after issuance the power to use it in
such a way as to acquire a monopoly which is not plainly within
Page 320 U. S. 666
the terms of the grant. The necessities or convenience of the
patentee do not justify any use of the monopoly of the patent to
create another monopoly. The fact that the patentee has the power
to refuse a license does not enable him to enlarge the monopoly of
the patent by the expedient of attaching conditions to its use.
United States v. Masonite Corp., supra, p.
316 U. S. 277.
The method by which the monopoly is sought to be extended is
immaterial.
United States v. Univis Lens Co., supra, pp.
316 U. S.
251-252. The patent is a privilege. But it is a
privilege which is conditioned by a public purpose. It results from
invention, and is limited to the invention which it defines. When
the patentee ties something else to his invention, he acts only by
virtue of his right as the owner of property to make contracts
concerning it and not otherwise. He then is subject to all the
limitations upon that right which the general law imposes upon such
contracts. The contract is not saved by anything in the patent laws
because it relates to the invention. If it were, the mere act of
the patentee could make the distinctive claim of the patent attach
to something which does not possess the quality of invention. Then
the patent would be diverted from its statutory purpose and become
a ready instrument for economic control in domains where the
antitrust acts or other laws not the patent statutes define the
public policy.
The instant case is a graphic illustration of the evils of an
expansion of the patent monopoly by private engagements. The patent
in question embraces furnace assemblies which neither the patentee
nor the licensee makes or vends. The struggle is not over a
combination patent and the right to make or vend it. The contest is
solely over unpatented wares which go into the patented product.
Respondents point out that the royalties under the license are
measured by the number of unpatented controls which are sold and
that no royalty is paid unless a furnace covered
Page 320 U. S. 667
by the patent has been installed. But the fact remains that the
competition which is sought to be controlled is not competition in
the sale of the patented assembly, but merely competition in the
sale of the unpatented thermostatic controls. The patent is
employed to protect the market for a device on which no patent has
been granted. But for the patent, such restraint on trade would
plainly run afoul of the antitrust laws. If the restraint is lawful
because of the patent, the patent will have been expanded by
contract. That on which no patent could be obtained would be as
effectively protected as if a patent had been issued. Private
business would function as its own patent office, and impose its
own law upon its licensees. It would obtain by contract what
letters patent alone may grant. Such a vast power "to multiply
monopolies" at the will of the patentee (Chief Justice White
dissenting in
Henry v. A. B. Dick Co., supra, p.
224 U. S. 53)
would carve out exceptions to the antitrust laws which Congress has
not sanctioned. Mr. Justice Brandeis, speaking for the Court,
stated in the
Carbice case that
"Control over the supply of such unpatented material is beyond
the scope of the patentee's monopoly, and this limitation, inherent
in the patent grant, is not dependent upon the peculiar function or
character of the unpatented material or on the way in which it is
used."
283 U.S. p.
283 U. S. 33. We
now add that it makes no difference that the unpatented device is
part of the patented whole.
That result may not be obviated in the present case by calling
the combustion stoker switch the "heart of the invention" or the
"advance in the art." The patent is for a combination only. Since
none of the separate elements of the combination is claimed as the
invention, none of them when dealt with separately is protected by
the patent monopoly.
Leeds & Catlin v. Victor Talking
Machine Co. (No. 1), 213 U. S. 301,
213 U. S. 318.
Whether the parts are new or old, the combination is the
invention
Page 320 U. S. 668
and it is distinct from any of them.
See Schumacher v.
Cornell, 96 U. S. 549,
96 U. S. 554;
Rowell v. Lindsay, 113 U. S. 97,
113 U. S. 101.
If a limited monopoly over the combustion stoker switch were
allowed, it would not be a monopoly accorded inventive genius by
the patent laws, but a monopoly born of a commercial desire to
avoid the rigors of competition fostered by the antitrust laws. If
such an expansion of the patent monopoly could be effected by
contract, the integrity of the patent system would be seriously
compromised.
Leeds & Catlin v. Victor Talking Machine Co. (No. 2),
supra, is authority for the conclusion that he who sells an
unpatented part of a combination patent for use in the assembled
machine may be guilty of contributory infringement. The protection
which the Court in that case extended to the phonograph record,
which was an unpatented part of the patented phonograph, is in
substance inconsistent with the view which we have expressed in
this case. The rule of the
Leeds & Catlin case (No. 2)
accordingly must no longer prevail against the defense
* that a
combination patent is being used to protect an unpatented part from
competition. That result obtains here though we assume for the
purposes of this case that Mercoid was a contributory infringer and
that respondents could have enjoined the infringement had they not
misused the patent for the purpose of monopolizing unpatented
material. Inasmuch as their misuse of the patent would have
precluded them from enjoining a direct infringement
(
Morton
Page 320 U. S. 669
Salt Co. v. G. S. Suppiger Co., supra), they cannot
stand in any better position with respect to a contributory
infringer. Where there is a collision between the principle of the
Carbice case and the conventional rules governing either
direct or contributory infringement, the former prevails.
The result of this decision, together with those which have
preceded it, is to limit substantially the doctrine of contributory
infringement. What residuum may be left we need not stop to
consider. It is sufficient to say that, in whatever posture the
issue may be tendered, courts of equity will withhold relief where
the patentee and those claiming under him are using the patent
privilege contrary to the public interest.
Morton Salt Co. v.
G. S. Suppiger Co., supra, p.
314 U. S.
492.
There remain the questions of
res judicata and
Mercoid's right to relief under the counterclaim.
Respondents point out that Mercoid knew of Mid-Continent's
actions and the license agreement prior to 1935 when the earlier
suit involving the validity of the Cross patent (
Smith v.
Mid-Continent Inv. Co., supra) was instituted. They state, and
the District Court found, that, although Mercoid was not made a
party to the earlier suit it provided the defense. The contention
therefore is that the doctrine of
res judicata binds
Mercoid as respects issues which were actually litigated and all
issues which might have been raised in that earlier suit. And it is
pointed out that, among the defenses which might have been
interposed were those relating to the misuse of the patent and the
violations of the antitrust laws. It is argued, moreover, that,
although Minneapolis Honeywell was not a party to the earlier
litigation, it is entitled to the benefit of the judgment, since
its title or claim derives from the patentee. We do not stop to
examine the premises on which the argument is based, for, though we
assume that they are correct, it does not follow that the
Page 320 U. S. 670
doctrine of
res judicata forecloses the defense which
is tendered.
Respondents ask the equity court for an injunction against
infringement by petitioner of the patent in question, and for an
accounting. Should such a decree be entered, the Court would be
placing its imprimatur on a scheme which involves a misuse of the
patent privilege and a violation of the antitrust laws. It would
aid in the consummation of a conspiracy to expand a patent beyond
its legitimate scope. But patentees and licensees cannot secure aid
from the court to bring such an event to pass, "unless it is in
accordance with policy to grant that help."
Beasley v. Texas
& Pacific Ry. Co., 191 U. S. 492,
191 U. S. 497.
And the determination of that policy is not "at the mercy" of the
parties (
id., p.
191 U. S. 498)
nor dependent on the usual rules governing the settlement of
private litigation.
"Courts of equity may, and frequently do, go much farther both
to give and withhold relief in furtherance of the public interest
than they are accustomed to go when only private interests are
involved."
Virginian Ry. Co. v. System Federation No. 40,
300 U. S. 515,
300 U. S. 552.
"Where an important public interest would be prejudiced," the
reasons for denying injunctive relief "may be compelling."
Harrisonville v. Dickey Clay Mfg. Co., 289 U.
S. 334,
289 U. S. 338.
And see United States v. Morgan, 307 U.
S. 183,
307 U. S. 194.
That is the principle which has led this Court in the past to
withhold aid from a patentee in suits for either direct or indirect
infringement where the patent was being misused.
Morton Salt
Co. v. G. S. Suppiger Co., supra, p.
314 U. S. 492.
That principle is controlling here. The parties cannot foreclose
the courts from the exercise of that discretion by the failure to
interpose the same defense in an earlier litigation.
Cf. Sola
Electric Co. v. Jefferson Electric Co., 317 U.
S. 173.
What we have just said does not, of course, dispose of Mercoid's
counterclaim for damages. That was based
Page 320 U. S. 671
on § 4 of the Clayton Act, which provides:
"Any person who shall be injured in his business or property by
reason of anything forbidden in the antitrust laws may sue therefor
in any district court of the United States in the district in which
the defendant resides or is found or has an agent, without respect
to the amount in controversy, and shall recover threefold the
damages by him sustained, and the cost of suit, including a
reasonable attorney's fee."
38 Stat. 731, 15 U.S.C. § 15. Though Mercoid were barred in the
present case from asserting any defense which might have been
interposed in the earlier litigation, it would not follow that its
counterclaim for damages would likewise be barred. That claim for
damages is more than a defense; it is a separate statutory cause of
action. The fact that it might have been asserted as a counterclaim
in the prior suit by reason of Rule 13(b) of the Rules of Civil
Procedure does not mean that the failure to do so renders the prior
judgment
res judicata as respects it.
Virginia-Carolina Chemical Co. v. Kirven, 215 U.
S. 252;
Larsen v. Northland Transportation Co.,
292 U. S. 20.
And see Scott, Collateral Estoppel by Judgment, 56
Harv.L.Rev. 1, 26-28; Restatement of the Law of Judgments, § 58.
The case is then governed by the principle that, where the second
cause of action between the parties is upon a different claim, the
prior judgment is
res judicata not as to issues which
might have been tendered, but "only as to those matters in issue or
points controverted upon the determination of which the finding or
verdict was rendered."
Cromwell v. County of Sac,
94 U. S. 351,
94 U. S. 353.
And see Russell v. Place, 94 U. S.
606. It was held in
Fleitmann v. Welsbach Street
Lighting Co., 240 U. S. 27, that
the statutory liability in question may be enforced only through
the verdict of a jury in a court of common law. But there is no
reason under the Rules of Civil Procedure why that may not be done
under this counterclaim. Rules 12(h), 13, 38, 42(b). Whether the
evidence
Page 320 U. S. 672
will show damages within the rule of
Story Parchment Co. v.
Paterson Co., 282 U. S. 555, is,
of course, a distinct question on which we intimate no opinion.
We have mentioned the statutory claim for damages because both
the District Court and the Circuit Court of Appeals denied that
relief. But, since the cause must be remanded to the District
Court, we think the question whether
res judicata bars any
other part of the relief sought by the counterclaim may
appropriately be reserved for it.
Reversed.
* The Court in that case did not refer to the doctrine of misuse
of a patent. That doctrine, indeed, was developed in this Court
some years later, as shown by the
Motion Picture case. The
record in the
Leeds & Catlin case indicates that the
point which we deem crucial in the instant case was adverted to
only obliquely in the briefs. The Court was chiefly concerned with
the proposition that a substitution or renewal of an unpatented
element of a combination patent, as distinguished from its repair,
is a "reconstruction" of the combination. 213 U.S. pp.
213 U. S. 333,
213 U. S.
336.
Opinion of MR. JUSTICE BLACK.
Although I entirely agree with the Court's judgments and the
grounds on which they rest, I find it necessary to add a few
remarks in order that silence may not be understood as acquiescence
in the views expressed in the dissenting opinion of MR. JUSTICE
FRANKFURTER. There is no inclination on my part to challenge the
wisdom of the established practice whereby we do not discuss issues
in the abstract. As I see, it, that salutary practice has no
application to the Court's discussion of contributory infringement
in the present case. The court below rested its decision on what it
considered to be a doctrine of contributory infringement, and
counsel for respondent have discussed and relied upon it here. The
Court's opinion demonstrates that the subject cannot be ignored,
since at least one element of the "complicated idea" which is
"compressed" in the judicially created "formula" of contributory
infringement clashes head-on with elements of the
Carbice
doctrine.
But my disagreement with this dissenting opinion runs much
deeper than the mere question of whether the Court has here
discussed the so-called formula of contributory infringement at an
improper or inopportune time. It seems to me that the judicial
error of discussing abstract
Page 320 U. S. 673
questions is slight compared to the error of interpreting
legislative enactments on the basis of a court's preconceived views
on "morals" and "ethics."
If there is such a wrong as contributory infringement, it must
have been created by the federal patent statutes. Since they make
no direct mention of such a wrong, its existence could only be
rested on inferences as to Congressional intent. In searching for
Congressional intent, we ordinarily look to such sources as
statutory language and legislative history. The dissent in question
mentions neither of these guides; in fact, it mentions no statute
at all. Instead, the chief reliance appears to be upon the law of
torts, a quotation from a decision of a lower federal court which
held that no infringement was shown, and the writer's personal
views on "morals" and "ethics." Not one of these references, unless
it be the latter, throws enough light on the patent statutes to
justify its use in construing these statutes as creating, in
addition to a right of recovery for infringement, a more expansive
right judicially characterized as a "formula" of "contributory
infringement." And for judges to rest their interpretation of
statutes on nothing but their own conceptions of "morals" and
"ethics" is, to say the least, dangerous business.
If the present case compelled consideration of the morals and
ethics of contributory infringement, I should be most reluctant to
conclude that the scales of moral value are weighted against the
right of producers to sell their unpatented goods in a free market.
At least since Adam Smith wrote, unhampered competition has not
generally been considered immoral. While there have been objections
to the Sherman Anti-Trust Act, few if any of the objectors have
questioned its morality.
It has long been recognized that a socially undesirable practice
may seek acceptance under the guise of conventional moral symbols.
And repeated judicial assertion
Page 320 U. S. 674
that a bad practice is hallowed by morals may, if unchallenged,
help it to receive the acceptance which it seeks. With this in
mind, I wish to make explicit my protest against talking about the
judicial doctrine of "contributory infringement" as though it were
entitled to the same respect as a universally recognized moral
truth.
MR. JUSTICE MURPHY concurs in this opinion.
MR. JUSTICE ROBERTS.
First. I agree that the patentee may not extend his
exclusive statutory right to make, use, and vend by forbidding one
practicing the invention from using in such practice an unpatented
article susceptible to such use. He may not obtain an injunction
against such user for infringement. This is a pure question of the
extent of the right of exclusion conferred by the patent statute.
[
Footnote 1] It nowise involves
the antitrust acts. A patent is property, and it may, like other
property, be so used as to violate those acts, [
Footnote 2] but that is not this case.
Second. I think the opinion may create confusion
respecting contributory infringement. The court below, thinking the
doctrine of the
Carbice and
Leitch cases
inapplicable, necessarily concluded that the user of the system
infringed the patent if he used any thermostat other than that
manufactured by respondent's exclusive licensee. But those cases
show that so to do would not constitute infringement of the patent.
And, if the purchaser and user could not be amerced as an
infringer, certainly one who sold to him with the purpose that he
should use the thermostat cannot be amerced for contributing to a
nonexistent infringement. One may disagree with the
Page 320 U. S. 675
decision of this court in
Leeds & Catlin Co. v. Victor
Talking Machine Co., 213 U. S. 325,
that the substitution by the user of the talking machine of a
record not made by the licensor constituted an infringement of the
patent, but, accepting the premise that such conduct was
infringement, one who participated in it by knowingly and
intentionally selling records to the user became an aider and
participant in the infringement and, as such, liable to the owner
of the patent. I cannot believe that the court's opinion is
intended to lay down a different principle.
Third. I disagree with the application of the rule
res judicata to one phase of the litigation. Mercoid
defended an earlier suit brought by the respondent against a user
of the patented combination who bought and installed as part of the
system a Mercoid thermostat. Confessedly the defense now asserted
under the
Carbice doctrine was available, was not made,
and judgment of validity and infringement was entered.
I fail to see what great question of public interest or public
policy is violated by holding that one to whom a defense was
available, in rebuttal of a claim broader than was warranted by the
statute on which the plaintiff's right was founded, is bound by the
judgment rendered. That judgment stands unreversed. The defense, if
made, as it could have been, would have benefited the defendant in
its pocketbook. We are now told that a misconstruction of the
patent law by a licensor is so violent and flagrant a flouting of
the public interest that a court of equity must hold its hand for
the benefit of a defendant whenever he chooses to invoke that
interest for his private benefit, though he has failed to make the
defense in an earlier litigation and stands of record an infringer.
If a wrong against the public has been perpetrated, it may be
redressed at the instance of the representatives of government.
Page 320 U. S. 676
I can only speculate as to the results of such a holding. If
applicable here, I cannot see why the principle should not apply to
every suit or action based upon, or arising out of, statutory
provisions, and to every defense bottomed on public policy, whether
expressed in statute or not. Surely the defendant in the earlier
suit, after the decree against him became final, could not have
defended a charge of contempt for disobeying the decree on the
ground now asserted. And if the judgment concluded him thus
directly, I cannot agree that he may now disregard it or
collaterally attack it. And confessedly Mercoid stands in his
shoes. [
Footnote 3]
I should affirm the judgment.
MR. JUSTICE REED joins in this opinion.
[
Footnote 1]
Carbice Corp. v. American Patents Corp., 283 U. S.
27;
Leitch Mfg. Co. v. Barber Co., 302 U.
S. 458.
[
Footnote 2]
Standard Sanitary Mfg. Co. v. United States,
226 U. S. 20;
United States v. Masonite Corp., 316 U.
S. 265.
[
Footnote 3]
Bryant Electric Co. v. Marshall, 169 F. 426,
aff'd, 185 F. 499.
Compare Souffront v. La
Compagnie, 217 U. S. 475.
And see cases collected 139 A.L.R. 41.
MR. JUSTICE FRANKFURTER, dissenting.
The Court holds in effect that the owner of a patent who exacts,
as the condition of a license, that unpatented materials used in
connection with the invention shall be purchased only from the
licensor cannot obtain relief from equity against one who supplies
such unpatented materials, even though the unpatented appliance was
not for common use, but was designedly adapted for the practice of
the invention, but, when so used, did not involve an infringement
of the patent. The decision is thus merely an appropriate
application of what has come to be known as the doctrine in the
Carbice case,
283 U. S. 27. In
this view I concur.
But in the series of cases in which that doctrine has heretofore
been applied (
Motion Picture Co. v. Universal Film Co.,
243 U. S. 502;
Carbice Corp. v. Am. Patents Corp., supra; Morton Salt Co. v.
314 U. S. ,
314
Page 320 U. S. 677
U.S. 488;
B.B. Chemical Co. v. Ellis, 314 U.
S. 495), not once has this Court found it relevant to
reject, either explicitly or by indirection, another doctrine of
the law -- that of contributory infringement -- nor has it seen fit
to make animadversions upon it. This is so doubtless for the simple
reason that appropriate occasions for relief against contributory
infringement are unrelated to the circumstances which bring the
Carbice doctrine into play. In a word, if there is no
infringement of a patent, there can be no contributory
infringer.
Within its true limits, the idea of contributory infringement
was woven into the fabric of our law, and has been part of it for
now more than seventy years.
See Roberts, Contributory
Infringement of Patent Rights, 12 Harv.L.Rev. 35,
and, e.g.,
Thomson-Houston Electric Co. v. Ohio Brass Co., 80 F. 712. The
doctrine has been put perhaps most simply by Judge Shepley:
"Different parties may all infringe, by respectively making or
selling, each of them, one of the elements of a patented
combination, provided those separate elements are made for the
purpose, and with the intent, of their being combined by a party
having no right to combine them. But the mere manufacture of a
separate element of a patented combination, unless such manufacture
be proved to have been conducted for the purpose, and with the
intent of aiding infringement, is not, in and of itself,
infringement."
Saxe v. Hammond, No. 12,411, 1 Ban. & A. 629, 632.
So understood, the doctrine of contributory infringement is an
expression both of law and morals. It is but one phase of a more
comprehending doctrine of legal liability enforced by this Court
both in civil and criminal cases.
See, for instance, American
Bank & Trust Co. v. Federal Reserve Bank, 256 U.
S. 350, and
Direct Sales Co. v. United States,
319 U. S. 703.
Indeed, the opinion in the
Carbice case explicitly
recognizes a proper scope for the doctrine of contributory
infringement as a phase of the
Page 320 U. S. 678
law of torts: "Infringement, whether direct or contributory, is
essentially a tort, and implies invasion of some right of the
patentee."
Carbice Corp. v. American Patents Corp.,
283 U. S. 27,
283 U. S.
33.
To be sure, the doctrine of contributory infringement may be
misconceived, and has been misapplied. That is the fate of all
shorthand statements of complicated ideas, whether in law or in the
natural sciences. But the misapplication of a formula into which a
complicated idea is compressed and thereby mutilated is a poor
excuse for rejecting the idea. It will be time enough to define the
appropriate limits of the doctrine of contributory infringement
when we are required to deal with the problem. Until then,
litigants and lower courts ought not to be embarrassed by
gratuitous innuendoes against a principle of the law which, within
its proper bounds, is accredited by legal history as well as
ethics. The long and, on the whole, not unworthy history of our
judicial administration admonishes us against expressing views on
matters not before us. The history of this Court especially
admonishes us against the evils of giving opinions not called for.
See e.g., Hughes, The Supreme Court of the United States,
p. 50, and 49 Harv.L.Rev. 68, 98. The duty of not going beyond the
necessities of a case is not a lifeless technicality. The
experience of centuries is behind the wisdom of not deciding,
whether explicitly or by atmospheric pressure, matters that do not
come to the Court with the impact of necessity.
For the reasons set forth by my brother ROBERTS,
res
judicata calls for affirmance.
MR. JUSTICE JACKSON, in dissent.
"A patent," said Mr. Justice Holmes, "is property carried to the
highest degree of abstraction -- a right
in rem to
exclude, without a physical object or content."* Here, the
Page 320 U. S. 679
patent covers a combination -- a system -- a sequence -- which
is said to be new, although every element and factor in it is old
and unpatentable. Thus, we have an abstract right in an abstruse
relationship between things in which individually there is no right
-- a legal concept which either is very profound or almost
unintelligible, I cannot be quite sure which.
Undoubtedly the man who first devised a thermostat to control
the flow of electric energy gave something to the world. But one
who merely carried it to a new location, or used two instead of
one, or three instead of two, or used it to control current for a
stoker motor, rather than for a damper, did not do much that I
would not expect of a good mechanic familiar with the instrument.
But that question of validity is not here. I assume that this
patent confers some rights, and ask what they are.
Of course, the abstract right to the "sequence" has little
economic importance unless its monopoly comprehends not only the
arrangement, but some, at least, of its components. If the patentee
may not exclude competitors from making and vending strategic
unpatented elements, such as the thermostat, adapted to use in the
combination, the patented system is so vulnerable to competition as
to be almost worthless. On the other hand, if he may prohibit such
competition, his system patent gathers up into its monopoly devices
long known to the art, and hence not themselves subject to any
patent.
It is suggested that such a patent should protect the patentee
at least against one who knowingly and intentionally builds a
device for use in the combination and vends it for that purpose.
That is what appears to have been done here. As to ethics, the
parties seem to me as much on a parity as the pot and the kettle.
But want of knowledge or innocent intent is not ordinarily
available to diminish patent protection. I do not see how intent
can
Page 320 U. S. 680
make infringement of what otherwise is not. The less legal
rights depend on someone's state of mind, the better.
The practical issue is whether we will leave such a combination
patent with little value indeed, or whether we will give it value
by projecting its economic effects to elements not by themselves a
part of its legal monopoly. In these circumstances, I think we
should protect the patent owner in the enjoyment of just what he
has been granted -- an abstract right in an abstruse combination --
worth whatever such a totality may be worth. I see no
constitutional or statutory authority for giving it additional
value by bringing into its monopoly all or any of the unpatentable
parts.
For these reasons, I agree with the Court that no case of
infringement could have been made out had the issue been raised
when it was timely. But I agree with the views of the doctrine of
res adjudicata expressed by MR. JUSTICE ROBERTS, and for
that reason join the dissent.
* I Holmes-Pollock Letters, p. 53.