Respondent, who owned a combination patent covering a canning
machine, authorized the sale of machines made thereunder designed
to pack fish into "1-pound" cans. Petitioner company bought four of
these machines second-hand, three of them rusted, corroded and
inoperable, and all four requiring cleaning and sandblasting to
become usable. The machines were reconditioned, and six of the 35
elements of the patent combination were resized to enable the
machines to pack "5-ounce" cans. The District Court and the Court
of Appeals held for respondent in his suit for patent
infringement.
Held: Adapting the machine for use on a different-sized
commodity is within the patent rights purchased, and is not an
infringement. Pp.
377 U. S.
424-425.
(a) In adapting the machines to a related use and lengthening
the useful capacity of the old combination on which royalties were
paid, petitioners were closer to permissible "repairing" than
infringing "reconstructing." P.
377 U. S.
425.
(b) The fact that the adaptation made the machines more useful
did not make it "reconstruction." P.
377 U. S.
425.
(c) Petitioner's license to use the machines is not for
"1-pound" cans only, as they were sold outright, and with no
restrictions. P.
377 U. S.
425.
314 F.2d 71 reversed.
MR. JUSTICE DOUGLAS delivered the opinion of the Court.
Respondent is the owner of a combination patent covering a fish
canning machine. A number of machines covered by the patent were
manufactured and sold under
Page 377 U. S. 423
his authorization. Among them were the four machines in suit,
petitioner Wilbur-Ellis Company being the second-hand purchaser.
Respondent received out of the original purchase price a royalty of
$1,500 per machine. As originally constructed, each of these
machines packed fish into "1-pound" cans: 3 inches in diameter and
4 11/16 inches high. Three of the machines, when acquired by
Wilbur-Ellis, were corroded, rusted, and inoperative; and all
required cleaning and sandblasting to make them usable.
Wilbur-Ellis retained petitioner Leuschner to put the machines in
condition so they would operate and to resize six of the 35
elements that made up the patented combination. The resizing was
for the purpose of enabling the machines to pack fish into
"5-ounce" cans: 2 1/8 inches in diameter and 3 1/2 inches long. One
of the six elements was so corroded that it could be rendered
operable only by grinding it down to a size suitable for use with
the smaller "5-ounce" can.
This suit for infringement followed, and both the District
Court, 200 F. Supp. 841, and the Court of Appeals, 314 F.2d 71,
held for respondent. The case is here on certiorari. 373 U.S.
921.
We put to one side the case where the discovery or invention
resided in or embraced either the size or locational
characteristics of the replaced elements of a combination patent or
the size of the commodity on which the machine operated. The claims
of the patent before us do not reach that far. We also put to one
side the case where replacement was made of a patented component of
a combination patent. We deal here with a patent that covered only
a combination of unpatented components.
The question in terms of patent law precedents is whether what
was done to these machines, the original manufacture and sale of
which had been licensed by the patentee, amounted to "repair," in
which event there was no infringement, or "reconstruction," in
which event there
Page 377 U. S. 424
was.
* The idea of
"reconstruction" in this context has the special connotation of
those acts which would impinge on the patentee's right "to exclude
others from making," 35 U.S.C. § 154, the article. As stated in
Wilson v.
Simpson, 9 How. 109,
50 U. S.
123,
". . . when the material of the combination ceases to exist, in
whatever way that may occur, the right to renew it depends upon the
right to make the invention. If the right to make does not exist,
there is no right to rebuild the combination."
On the other hand, "[w]hen the wearing or injury is partial,
then repair is restoration, and not reconstruction."
Ibid.
Replacing worn-out cutting knives in a planing machine was held to
be "repair," not "reconstruction," in
Wilson v. Simpson,
supra. Our latest case was
Aro Mfg. Co. v. Convertible Top
Replacement Co., 365 U. S. 336,
which a majority of the Court construe as holding that it was not
infringement to replace the worn-out fabric of a patented
convertible automobile top, whose original manufacture and sale had
been licensed by the patentee.
See No. 75,
Aro Mfg.
Co. v. Convertible Top Replacement Co., decided this day.
Post, p. 476.
Whatever view may be taken of the holding in the first
Aro case, the majority believe that it governs the present
one. These four machines were not spent; they had years of
usefulness remaining, though they needed cleaning and repair. Had
they been renovated and put to use on the "1-pound" cans, there
could be no question but that they were "repaired," not
"reconstructed," within the meaning of the cases. When six of the
35 elements of the combination patent were resized or relocated, no
invasion of the patent resulted, for, as we have said, the size of
cans serviced by the machine was no part of the invention; nor were
characteristics of size, location, shape and construction
Page 377 U. S. 425
of the six elements in question patented. Petitioners, in
adapting the old machines to a related use, were doing more than
repair in the customary sense; but what they did was kin to repair,
for it bore on the useful capacity of the old combination, on which
the royalty had been paid. We could not call it "reconstruction"
without saying that the patentee's right "to exclude others from
making" the patented machine, 35 U.S.C. § 154, had been infringed.
Yet adaptation for use of the machine on a "5-ounce" can is within
the patent rights purchased, since size was not an invention.
The adaptation made in the six nonpatented elements improved the
usefulness of these machines. That does not, however, make the
adaptation "reconstruction" within the meaning of the cases. We are
asked in substance to treat the case as if petitioners had a
license for use of the machines on "1-pound" cans only. But the
sales here were outright, without restriction.
Adams v.
Burke, 17 Wall. 453,
84 U. S. 456,
therefore controls:
". . . when the patentee, or the person having his rights, sells
a machine or instrument whose sole value is in its use, he receives
the consideration for its use and he parts with the right to
restrict that use."
And see United States v. Univis Lens Co., 316 U.
S. 241,
316 U. S.
250.
Reversed.
MR. JUSTICE HARLAN would affirm the judgment substantially for
the reasons given in the majority opinion in the Court of Appeals,
314 F.2d 71.
*
See Cotton-Tie Co. v. Simmons, 106 U. S.
89 (reconstruction);
Heyer v. Duplicator Mfg.
Co., 263 U. S. 100
(repair).