Law For Engineers Case Analysis: Aro Manufacturing Co. V. Convertible Top Replacement Co.
Introduction
The case was presented in the United States supreme court in 1961. The court redefined repair and reconstruction doctrine of the U. S patent law. This happened while deliberating on this case. The decision made by the court is known as Aro-I. This is because some years later similar issues were readdressed by the supreme court. Supreme court readdressed the same issues in a second case in 1964 involving the same parties which is known as Aro-II. The specific controversy in Aro concerned the replacement of a fabric top portion of an automobile convertible roof assembly. After some years, the tops became torn or discolored, often as a result of bird droppings, and owners wished to replace the cloth part without buying an entire new convertible top assembly. The patent covered the combination of the cloth and a number of metal parts that remained serviceable. Aro was a company that engaged in the supply of replacement cloth tops that fit various car models. Because Aro declined to pay a royalty to the patentee, patent infringement litigation followed.
Previous state of law
Prior to the Supreme Court’s decision in Aro-I, when a purchaser of a patented product replaced some components of the product (because they were worn or otherwise unsatisfactory to the owner of the product), U. S. lower courts made the decision whether the conduct was permissible repair or impermissible reconstruction of the patented article by using a complex, multi-factor balancing test. The courts weighed against one another factors such as the following, although there was no common denominator for them: the cost of the replaced component or components relative to the cost of the entire article, the number of replaced components versus the total number of components, the relative life spans of the different components, and whether the replaced component was the heart, essence, or “gist” of the invention. Thus the court of appeals had said in its opinion that the fabric "is not a minor or relatively inexpensive component" of the patented combination, or an element that would expectedly wear out after a very short period of use although its "expectable life span" is shorter than that of the other components and, for these reasons, it concluded that "an owner would [not] rationally believe that he was making only a minor repair" in replacing the worn-out fabric, but that, instead, the replacement "would be counted a major reconstruction". The Supreme Court’s own few precedents, however, tended to paint with a broader brush instead of resorting to the foregoing factor analysis.
The Supreme Court stated that “the distilled essence” of the prior case law came from judge learned hand, who ruled in 1948 that "the patent monopolist cannot prevent those to whom he sells from reconditioning articles worn by use, unless they in fact make a new article". Accordingly, the Court rejected the factor analysis approach of lower courts to repair and reconstruction. The Case It was about fabric top replacement in a convertible automobile’s roof assembly. After sometime, fabric tops of a convertible would become discolored and torn due to droppings from birds. Owners would like to replace the part of the tops that is made of cloth without having to purchase the entire top assembly of the convertible. The patent would. cover some metal parts and the cloth that. would be serviceable. Aro supplied replacement cloth that would fit different car models. Patent infringement arose when Aro refused to pay atentee a royalty fee. Buyers of patented products replaced the components of the products. This was before the supreme court made a decision in Aro-I case. Lower courts in the U. S decides whether this conduct was permitted Folding tops for vehicles consisting of bows of wood or metal covered with a flexible waterproof fabric (in the days of "The Deacon's Masterpiece; or, The Wonderful `One-Hoss Shay'" with leather) are, of course, as old as the automobile art which in the beginning only adopted with necessary modifications the much older art of collapsible tops for chaises, buggies and some other horse drawn vehicles.
The rear panels of the folding tops of earlier days were fastened permanently at the bottom to the outside of the top of the rear portion of the body of the vehicle, and the quarters, the rear portions of the sides of the vehicle, if protected at all, were protected with flaps or curtains, sometimes integral with the top and sometimes not, fastened at the bottom to the outside of the top of the body with buttons, snaps or some equivalent means of fastening. Naturally, to prevent tearing, these quarter flaps had to be unfastened by hand when the top was lowered and when the top was put up fastened again by hand for neat appearance and also to prevent the entrance of rain. This manual fastening and unfastening of the bottoms of the quarter flaps presented no great problem until the advent of the so-called convertible automobile with a folding top operated mechanically rather than manually.
The problem presented by the quarter flaps of tops of this kind was first partially solved by fastening the bottom of the flap to the outside of the top of the body of the vehicle with "releasable fastening means, " that is to say, with some sort of slide fastening device which would detach automatically when the top was lowered. The major part of the problem remained, however, for when the top was put up the flaps had to be fastened manually, which meant that the operator was required to get out of the car altogether, or at least to reach out, often, of course, in the rain. The object of the Mackie-Duluk patent was "to provide an automatic fastening and sealing means at the top and sides of the tonneau of the convertible" which "never has to be operated or touched by the driver of the car. " And, as we have already indicated, the District Court found that the patentees succeeded in attaining their object by devising a patentable combination of elements. In substantiation of this conclusion we point out that the fabric portion of the top is not a minor or relatively inexpensive component of the patented combination, or a part of the invention which expectably would wear out after a very short period of use, like the cutter-knives in the Wilson case or the bands of gelatine in the Heyer case. There was testimony, and the court below found, that barring accidental damage the average life of a convertible top was about three years, although with care under favorable conditions or in the hands of a person not too fastidious as to appearance it would last much longer. The expectable life span of the fabric is no doubt shorter than the expectable life span of the other components of the convertible top and of the car itself. But the life of the fabric is not so short, nor is the fabric so cheap, that we can safely assume that an owner would rationally believe that in replacing it he was making only a minor repair to his top structure.
On the contrary, we believe that replacing the fabric would be counted a major reconstruction of the top assembly, In short, we agree with the District Court's finding of infringement. Other arguments advanced by the appellants have been considered but are rejected as too insubstantial to call for discussion. Judgment will be entered affirming the judgment of the District Court.
Opinion of the court
The Court reviewed the prior case law concerning repair and reconstruction, with a principal focus on its own rather than lower court opinions. It rejected the analysis of those lower courts using a many-factor, balancing test and instead held the proper test to be this: The decisions of this Court require the conclusion that reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to "In fact make a new article", after the entity, viewed as a whole, has become spent. In order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property. Measured by this test, the replacement of the fabric involved in this case must be characterized as permissible "repair, " not "reconstruction. "
The Court emphasized that an infringement analysis for making the subject matter claimed in a combination patent could not single out one element of the combination as "essential, " but could find infringement only when all elements were made. No element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how costly or difficult replacement may be. While there is language in some lower court opinions indicating that "repair" or "reconstruction" depends on a number of factors, it is significant that each of the three cases of this Court, cited for that proposition, holds that a license to use a patented combination includes the right "to preserve its fitness for use so far as it may be affected by wear or breakage. " On that basis, the replacement of the old fabric top was permissible repair rather than impermissible reconstruction. The opinion for the majority, by Justice Whittaker, largely accepted the arguments that the U. S. Justice Department made as amicus curiae.
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 favour of Convertible Top and enjoined Aro from further manufacture or distribution of the fabric replacements. The Court of Appeals for the First Circuit affirmed. Aro Mfg. Co. v. Convertible Top Replacement Co. Patent Infringement Aro Mfg. Co. v. Convertible Top Replacement Co. patent infringement case was presented in the United States Supreme Court in 1961. While deliberating on this case, the Court redefined repair and reconstruction doctrine of the U. S patent law. The decision made by the Court is known as Aro I in some cases because some years later similar issues were readdressed by the Supreme Court in another case in 1964 in which similar parties were involved. In controversy in the case was about fabric top replacement in a convertible automobile’s roof assembly. After sometime, fabric tops of a convertible would become discoloured and torn due to droppings from birds. Owners would like to replace the part of the tops that is made of cloth without having to purchase the entire top assembly of the convertible. The patent would cover some metal parts and the cloth that would be serviceable. Aro supplied replacement cloth that would fit different car models.
Patent infringement arose when Aro refused to pay patentee a royalty fee. Before the Supreme Court made a decision in Aro-I case, buyers of patented products replaced the components of the products. The lower courts in the U. S decided whether this conduct was permitted as a repair or an impermissible reconstruction of patented article using complex and multi-factor balancing test. When making the decision, the courts had to weigh several factors including cost of replaced components against the relative components of the whole article, replaced components against the overall number of the components, life span of the components and essence of the replaced components, as well as whether the replaced component was the gist of the entire invention. In its opinion, the court of appeals said that the main issue is not relatively expensive or minor component of patented combination or element that is expected to wear out after some years of use despite having an expectable life span that is shorter than life span of other components. For this reason, the court concluded that the owner would or would not rationally believe that a minor repair was being made while replacing worn out fabric. Instead, this replacement would account for a major reconstruction. However, few precedents of the Supreme Court had a broader analysis than foregoing the factor analysis. The Court noted that distilled essence of the case originated from a ruling by Judge Learned Hand who stated that patent monopolists should not hinder their buyers from reconditioning articles that are worn out by use unless if they make new articles. On this basis, the court rejected factor analysis approach used by the lower courts on reconstruction and repair.
Conclusion
No. Justice Charles E. Whittaker, writing for a 6-3 majority, reversed. The Supreme Court held that because Convertible Top did not patent the fabric top individually, there was no direct patent infringement. With no direct infringement, there could be no contributory infringement. The patent only covered the combination of parts that made up the folding top, not each individual part that made up that top. Justice Hugo L. Black concurred, writing that the other concurring opinion and the dissenting opinion were unnecessarily confusing. Justice William J. Brennan concurred in the result, arguing that there was no infringement because the cost of the replacement top in comparison with the device as a whole was so small made replacing the top a permissible repair instead of a reconstruction. Justice John M. Harlan dissented, arguing that the replacement of an unpatented part in a patented device is a forbidden reconstruction of the device. This constitutes direct patent infringement. Justice Felix Frankfurter and Justice Potter Stewart joined in the dissent.
