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WILBUR-ELLIS CO. ET AL. v. KUTHER

decided: June 8, 1964.

WILBUR-ELLIS CO. ET AL
v.
KUTHER



CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT.

Warren, Black, Douglas, Clark, Harlan, Brennan, Stewart, White, Goldberg

Author: Douglas

[ 377 U.S. Page 422]

 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

[ 377 U.S. Page 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

[ 377 U.S. Page 424]

     was.*fn* 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. ยง 154, the article. As stated in Wilson v. Simpson, 9 How. 109, 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, "When 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 ...


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