Majority — Brennan J.
p. 476ARO MANUFACTURING CO, INC, et al . v . CON-VERTIBLE TOP REPLACEMENT CO, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FIRST CIRCUIT.
No. 75. Argued February 17, 1964.—Decided June 8, 1964.
Respondent was the assignee of certain territorial rights in a combina-
tion patent for a top-structure for convertible automobiles. The
patent covered only the combination of several unpatented com-
ponents and made no claim to invention based on the fabric used
in the top-structure. Top-structures using the patented combina-
tion were included in 1952-1954 cars made by General Motors
Corp., pursuant to a patent license, and by Ford Motor Co., which
had no license during that period. Respondent filed an infringe-
ment suit against petitioners, who, without a license, made and sold
replacement fabrics to fit cars using the patented top-structures.
The patent owner (respondent’s assignor) notified petitioners on
January 2, 1954, that petitioners’ sale of fabrics to fit Ford tops
would be contributory infringement. On July 21, 1955, Ford paid
the patent owner $73,000, and it was agreed that Ford, its dealers,
customers and users, were released from all claims of infringement
of the patent, other than with respect to “replacement top fabrics.”
The patent owner reserved the right to license the manufacture,
use and sale of such replacement fabrics under the patent. Re-
spondent’s claim of contributory infringement was upheld in the
District Court and the Court of Appeals. That holding was re-
versed here (365 U. S. 336) on the ground that the fabric replace-
ment was permissible “repair” and not infringing “reconstruction,”
so that there was no direct infringement by the car owner to which
petitioners could contribute. On remand, the District Court dis-
missed the complaint as to both General Motors and Ford cars.
The Court of Appeals reinstated the judgment for respondent with
respect to Ford cars, holding that, since Ford had not been licensed
to produce the top-structures on those cars, petitioners’ sale of
replacement fabrics for them constituted contributory infringe-
ment even though the replacement was merely “repair.” The
Court of Appeals thus concluded that its “previous decision in this
case was not reversed insofar as unlicensed Ford cars are concerned.”
Held:
p. 4771. This Court’s previous decision did not reverse the Court of
Appeals’ holding as it applied to Ford cars. P. 480.
2. Persons who purchased cars from Ford, which infringed the
patent by manufacturing and selling them with the top-structures,
likewise infringed by using or repairing the top-structures; and the
supplier of replacement fabrics for use in such infringing repair
was a contributory infringer under § 271 (c) of the Patent Code.
Pp. 482-488.
3. A majority of the Court is of the view that § 271 (c) requires
knowledge by the alleged contributory infringer, not merely that
the component sold by him was especially designed for use in a
certain machine or combination, but also that the combination for
which the component was designed was both patented and infring-
ing. Pp. 488-493.
(a) This knowledge requirement affords petitioners no defense
with respect to replacement-fabric sales after January 2, 1954,
since they then had been notified of Ford’s infringement. Pp.
489-491.
(b) Petitioners are not liable for contributory infringement
with respect to sales before that date, absent a showing on remand
of their previous knowledge of Ford’s infringement. P. 491.
4. The patent owner’s attempt, in the agreement with Ford, to
reserve the right to license future replacement sales was invalid,
since he cannot in granting the right to use patented articles im-
pose conditions as to unpatented replacement parts to be used
with those articles. After July 21, 1955, Ford car owners had
authority to use and repair the patented top-structures; hence they
were no longer direct infringers, and hence petitioners as sellers
of replacement fabrics for such use and repair were not contributory
infringers. Aro Mjg. Co. v. Convertible Top Replacement Co.,
365 U. S. 336, followed. Pp. 496-500.
5. The agreement with Ford did not eliminate petitioners’ lia-
bility for sales prior to July 21, 1955, for, although a contributory
infringer is a species of joint-tortfeasor, the common-law rule by
which a release of one joint-tortfeasor necessarily released another
is not applied to contributory infringement. Pp. 500-502.
6. For the guidance of the District Court, four Justices express
the following views to the effect that the agreement of July 21,
1955, limits the damages that respondent may recover for the pre-
agreement infringement:
p. 478(a) In contributory-infringement cases as in other instances
of joint-tortfeasors’ liability, payment by one joint-tortfeasor
diminishes the amount that may be recovered from another.
P. 503.
(b) Under 35 U. S. C. §
284, only damages, or loss to the
patent owner, are recoverable for infringement, and not the
infringer’s profits. Pp. 503-507.
(c) Respondent’s damages should not be measured by a
royalty on petitioners’ sales of replacement fabrics, since respondent
could never have licensed those sales, which involved unpatented
materials to be used in the mere repair of patented articles. Pp.
507-509.
(d) If the payment by Ford to the patent owner was the
equivalent of the royalties the patent owner would have received
by licensing Ford in the first instance, petitioners would be liable
only for nominal damages. Pp. 512-513.
312 F. 2d 52, reversed in part, affirmed in part, and remanded.
Charles Hieken argued the cause for petitioners. With
him on the briefs was David Wolf.
Elliott I. Pollock argued the cause and filed a brief for
respondent.
Mr . Just ice Brennan delivered the opinion of the
Court.
Respondent Convertible Top Replacement Co., Inc.,
(CTR) acquired by assignment from the Automobile
Body Research Corporation (AB) all rights for the ter-
ritory of Massachusetts in United States Patent No.
2,569,724, known as the Mackie-Duluk patent. This is
a combination patent covering a top-structure for auto-
mobile “convertibles.” Structures embodying the pat-
ented combination were included as original equipment
in 1952-1954 models of convertibles manufactured by the
General Motors Corporation and the Ford Motor Com-
pany. They were included in the General Motors cars
by authority of a license granted to General Motors by
AB; Ford, however, had no license during the 1952-1954
p. 479period, and no authority whatever under the patent until
July 21, 1955, when it entered into an agreement, dis-
cussed later, with AB; Ford’s manufacture and sale of
the automobiles in question therefore infringed the patent.
Petitioner Aro Manufacturing Co., Inc. (Aro), which is
not licensed under the patent, produces fabric compo-
nents designed as replacements for worn-out fabric por-
tions of convertible tops; unlike the other elements of the
top-structure, which ordinarily are usable for the life of
the car, the fabric portion normally wears out and requires
replacement after about three years of use. Aro’s fabrics
are specially tailored for installation in particular models
of convertibles, and these have included the 1952-1954
General Motors and Ford models equipped with the
Mackie-Duluk top-structures.
CTR brought this action against Aro in 1956 to enjoin
the alleged infringement and contributory infringement,
and to obtain an accounting, with respect to replacement
fabrics made and sold by Aro for use in both the General
Motors and the Ford cars embodying the patented struc-
tures. The interlocutory judgment entered for CTR by
the District Court for the District of Massachusetts, 119
U. S. P. Q. 122, and affirmed by the Court of Appeals for
the First Circuit,
270 F. 2d 200, was reversed here. Aro
Mjg. Co. v. Convertible Top Replacement Co.,
365 U. S.
336 (“Aro I”), petition for rehearing or alternative mo-
tion for amendment or clarification denied,
365 U. S. 890.
Our decision dealt, however, only with the General
Motors and not with the Ford cars. Like the Court of
Appeals, we treated CTR’s right to relief as depending
wholly upon the question whether replacement of the
fabric portions of the convertible tops constituted infring-
ing “reconstruction” or permissible “repair” of the pat-
ented combination. The lower courts had held it to con-
stitute “reconstruction,” making the car owner for whom
it was performed a direct infringer and Aro, which made
729-256 0-65-35
p. 480and sold the replacement fabric, a contributory infringer;
we disagreed and held that it was merely “repair.” The
reconstruction-repair distinction is decisive, however, only
when the replacement is made in a structure whose orig-
inal manufacture and sale have been licensed by the
patentee, as was true only of the General Motors cars;
when the structure is unlicensed, as was true of the Ford
cars, the traditional rule is that even repair constitutes
infringement. Thus, the District Court had based its
ruling for CTR with respect to the Ford cars on the alter-
native ground that, even if replacement of the fabric por-
tions constituted merely repair, the car owners were still
guilty of direct infringement, and Aro of contributory
infringement, as to these unlicensed and hence infringing
structures. 119 U. S. P. Q. 122, 124. This aspect of the
case was not considered or decided by our opinion in
Aro I.
On remand, however, another judge in the District
Court read our opinion as requiring the dismissal of
CTR’s complaint as to the Ford as well as the General
Motors cars, and entered judgment accordingly. CTR
appealed the dismissal insofar as it applied to the Ford
cars, and the Court of Appeals reinstated the judgment
in favor of CTR to that extent. 312 F. 2d 52. In our
view the Court of Appeals was correct in holding that its
“previous decision in this case was not reversed insofar as
unlicensed Ford cars are concerned.” 312 F. 2d, at 57.1
p. 481However, we granted certiorari,
372 U. S. 958, to consider
that question, and to consider also the issue that had not
been decided in Aro I: whether Aro is liable for contribu-
tory infringement, under 35 U. S. C. §
271 (c), with
respect to its manufacture and sale of replacement fabrics
for the Ford cars.2
consider the body of authority holding that even repair of an in-
fringing article constitutes infringement; and from, among other such
statements in its opinion, see id., at 344, 346, its reliance on the
proposition that “a license to use a patented combination includes
the right” to repair it, id., at 345—a proposition that of course was
not applicable to the Ford cars, whose owners had purchased the
patented structures from an unlicensed manufacturer and thus had no
“license to use” them. The three other opinions in Aro I were like-
wise directed entirely to the issue of repair versus reconstruction,
and gave no attention to the different considerations that would come
into play in the absence of a license from the patentee to the auto-
mobile manufacturer. The concurring opinion of Mr . Just ic e
Bla ck, for example, relied on the proposition that “One royalty to
one patentee for one sale is enough under our patent law as written,”
365 U. S., at 360, which would seem inapplicable to the situation
presented by the Ford cars, where the patentee had not received any
royalty on the sale of the patented structures. See also
id., at 354,
356, n. 9; and see the dissenting opinion of Mr . Just ic e Har la n.
365 U. S., at 369, 373. The concurring opinion of Mr . Just ice
Bre nn an did refer to the presence in the case of the unlicensed
Ford cars; it stated,
365 U. S., at 368, that “the judgment of the
Court of Appeals must be reversed, except, however, as to the relief
granted respondent [CTR] in respect of the replacements made on
Ford cars . . . .” That the author of that opinion did not under-
stand the Court as having ruled differently on the Ford car question,
or as having ruled on it at all, is shown by the fact that he concurred
generally in the result, rather than concurring in part and dissenting
in part. The Court said nothing to indicate disagreement with this
interpretation of its opinion and decision.
p. 482I.* 3
CTR contends, and the Court of Appeals held, that
since Ford infringed the patent by making and selling the
top-structures without authority from the patentee,4 per-
sons who purchased the automobiles from Ford likewise
infringed by using and repairing the structures; and hence
Aro, by supplying replacement fabrics specially designed
to be utilized in such infringing repair, was guilty of con-
tributory infringement under 35 U. S. C. §
271 (c). In
Aro I,
365 U. S., at 341-342, the Court said:
“It is admitted that petitioners [Aro] know that the
purchasers intend to use the fabric for replacement
purposes on automobile convertible tops which are
covered by the claims of respondent’s combination
consideration of the motion until the hearing of the case on the merits.
375 U. S. 804. The items in question, which were not included
in the record in Aro I, consist of certain requests for admissions
and answers thereto, and of materials involved in an accounting
proceeding begun after the original affirmance by the Court of
Appeals but subsequently stayed and never completed. A motion
to strike the same materials from the record was made by CTR
in the course of the second appeal to the Court of Appeals, and
was denied by that court “without prejudice to renewal in its brief,
at the oral argument, or upon taxation of costs.” CTR did not
renew the motion upon brief or oral argument in the Court of
Appeals, but says that it still intends to do so upon taxation of costs
if costs should ever be taxed against it by the Court of Appeals.
Because of these events in the Court of Appeals, the motion in this
Court is also denied, without prejudice to its renewal upon taxation
of costs in the Court of Appeals.
p. 483patent, and such manufacture and sale with that
knowledge might well constitute contributory in-
fringement under §
271 (c), if, but only if, such a
replacement by the purchaser himself would in itself
constitute a direct infringement under §
271 (a), for
it is settled that if there is no direct infringement of
a patent there can be no contributory infringe-
ment. ... It is plain that §
271 (c)—a part of the
Patent Code enacted in 1952—made no change in the
fundamental precept that there can be no contribu-
tory infringement in the absence of a direct infringe-
ment. That section defines contributory infringe-
ment in terms of direct infringement—namely the
sale of a component of a patented combination or
machine for use ‘in an infringement of such patent.’
And § 271 (a) of the new Patent Code, which de-
fines ‘infringement,’ left intact the entire body of
case law on direct infringement. The determinative
question, therefore, comes down to whether the car
owner would infringe the combination patent by re-
placing the worn-out fabric element of the patented
convertible top on his car . . . .”
Similarly here, to determine whether Aro committed con-
tributory infringement, we must first determine whether
the car owners, by replacing the worn-out fabric element
of the patented top-structures, committed direct infringe-
ment. We think it clear, under § 271 (a) of the Patent
Code and the “entire body of case law on direct infringe-
ment” which that section “left intact,” that they did.
Section
271 (a) provides that “whoever without
authority makes, uses or sells any patented inven-
tion . . . infringes the patent.” It is not controverted—
nor could it be—that Ford infringed by making and
selling cars embodying the patented top-structures with-
out any authority from the patentee. If Ford had had
such authority, its purchasers would not have infringed
p. 484by using the automobiles, for it is fundamental that sale
of a patented article by the patentee or under his author-
ity carries with it an “implied license to use.”
Adams v.
Burke, 17 Wall. 453, 456;
United States v. Univis Lens
Co., 316 U. S. 241, 249, 250-251. But with Ford lacking
authority to make and sell, it could by its sale of the cars
confer on the purchasers no implied license to use, and
their use of the patented structures was thus “without
authority” and infringing under §
271 (a).5 Not only
does that provision explicitly regard an unauthorized user
of a patented invention as an infringer, but it has often
and clearly been held that unauthorized use, without
more, constitutes infringement.
Birdsell v. Shaliol, 112
U. S. 485;
Union Tool Co. v. Wilson, 259 U. S. 107, 114;
see
Sanitary Refrigerator Co. v. Winters, 280 U. S. 30,
32-33; General Talking Pictures Corp. v. Western Elec-
tric Co.,
305 U. S. 124, 127.
If the owner’s use infringed, so also did his repair of
the top-structure, as by replacing the worn-out fabric
component. Where use infringes, repair does also, for it
perpetuates the infringing use.
“No doubt ... a patented article may be repaired
without making the repairer an infringer, . . . but
not where it is done for one who is. It is only where
the device in patented form has come lawfully into
the hands of the person for or by whom it is repaired
that this is the case. In other words, if one without
right constructs or disposes of an infringing machine,
it affords no protection to another to have merely
repaired it; the repairer, by supplying an essential
part of the patented combination, contributing by
p. 485so much to the perpetuation of the infringement.”
Union Special Mach. Co. v. Maimin,
161 F. 748, 750
(C. C. E. D. Pa. 1908), aff’d,
165 F. 440 (C. A. 3d Cir.
1908).
Accord, Remington Rand Business Serv., Inc., v. Acme
Card System Co.,
71 F. 2d 628, 630 (C. A. 4th Cir. 1934),
cert, denied,
293 U. S. 622; 2 Walker, Patents (Deller ed.
1937), at 1487. Consequently replacement of worn-out
fabric components with fabrics sold by Aro, held in Aro I
to constitute “repair” rather than “reconstruction” and
thus to be permissible in the case of licensed General
Motors cars, was not permissible here in the case of un-
licensed Ford cars. Here, as was not the case in Aro I,
the direct infringement by the car owners that is pre-
requisite to contributory infringement by Aro was
unquestionably established.
We turn next to the question whether Aro, as supplier
of replacement fabrics for use in the infringing repair by
the Ford car owners, was a contributory infringer under
§ 271 (c) of the Patent Code. That section provides:
“Whoever sells a component of a patented machine,
manufacture, combination or composition, or a ma-
terial or apparatus for use in practicing a patented
process, constituting a material part of the invention,
knowing the same to be especially made or especially
adapted for use in an infringement of such patent,
and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be
liable as a contributory infringer.”
We think Aro was indeed liable under this provision.
Such a result would plainly have obtained under the
contributory-infringement case law that §
271 (c) was
intended to codify.6 Indeed, most of the law was estab-
p. 486lished in cases where, as here, suit was brought to hold
liable for contributory infringement a supplier of replace-
ment parts specially designed for use in the repair of
infringing articles. In Union Tool Co. v. Wilson, supra,
259 U. S., at 113-114, the Court held that where use of
the patented machines themselves was not authorized,
“There was, consequently, no implied license to use
the spare parts in these machines. As such use,
unless licensed, clearly constituted an infringement,
the sale of the spare parts to be so used violated
the injunction [enjoining infringement].”
As early as 1897, Circuit Judge Taft, as he then was,
thought it “well settled” that
“where one makes and sells one element of a com-
bination covered by a patent with the intention and
about 80 years.” H. R. Rep. No. 1923 on H. R. 7794, 82d Cong.,
2d Sess., at 9; see also Congressman Rogers’ statement, Hearings be-
fore Subcommittee No. 3 of House Judiciary Committee on H. R.
3760, 82d Cong., 1st Sess., at 159:
“Then in effect this recodification, particularly as to section 231
[which became §
271 in the Patent Code of 1952], would point out to
the court, at least that it was the sense of Congress that we remove
this question of confusion as to whether contributory infringement
existed at all, and state in positive law that there is such a thing as
contributory infringement, or at least it be the sense of Congress
by the enactment of this law that if you have in the Mercoid case
[320 IT. S. 661, 680] done away with contributory infringement, then
we reinstate it as a matter of substantive law of the United States
and that you shall hereafter in a proper case recognize or hold liable
one who has contributed to the infringement of a patent.
“That is the substantive law that we would write if we adopted
this section 231 as it now exists. Is that not about right?”
Mr. Giles S. Rich, now judge of the Court of Customs and Patent
Appeals, then spokesman for proponents of §271 (c), answered that
the statement of the bill’s purpose was “very excellent.” Ibid. See
also 98 Cong. Rec. 9323, 82d Cong., 2d Sess., July 4, 1952 (colloquy of
Senators Saltonstall and McCarran).
p. 487for the purpose of bringing about its use in such a
combination he is guilty of contributory infringe-
ment and is equally liable to the patentee with him
who in fact organizes the complete combination.”
Thomson-Houston Elec. Co. v. Ohio Brass Co.,
80
F. 712, 721 (C. A. 6th Cir. 1897).
While conceding that in the case of a machine purchased
from the patentee, one “may knowingly assist in as-
sembling, repairing, and renewing a patented combina-
tion by furnishing some of the needed parts,” Judge Taft
added: “but, when he does so, he must ascertain, if he
would escape liability for infringement, that the one buy-
ing and using them for this purpose has a license, express
or implied, to do so.” Id., at 723. See also National
Brake & Elec. Co. v. Christensen,
38 F. 2d 721, 723 (C. A.
7th Cir. 1930), cert, denied,
282 U. S. 864; Reed Roller Bit
Co. v. Hughes Tool Co.,
12 F. 2d 207, 211 (C. A. 5th Cir.
1926); Shickle, Harrison & Howard Iron Co. v. St. Louis
Car-Coupler Co.,
77 F. 739, 743 (C. A. 8th Cir. 1896),
cert, denied,
166 U. S. 720. These cases are all authority
for the proposition that “The right of one, other than the
patentee, furnishing repair parts of a patented combina-
tion, can be no greater than that of the user, and he is
bound to see that no other use of such parts is made than
that authorized by the user’s license.” National Malle-
able Casting Co. v. American Steel Foundries,
182 F. 626,
641 (C. C. D. N.J. 1910).
In enacting §
271 (c), Congress clearly succeeded in its
objective of codifying this case law. The language of the
section fits perfectly Aro’s activity of selling “a component
of a patented . . . combination . . . , constituting a mate-
rial part of the invention, . . . especially made or espe-
cially adapted for use in an infringement of such patent,
and not a staple article or commodity of commerce suit-
able for substantial noninfringing use.” Indeed, this is
the almost unique case in which the component was
p. 488hardly suitable for any noninfringing use.7 On this basis
both the District Court originally, 119 U. S. P. Q, at 124,
and the Court of Appeals in the instant case, 312 F. 2d,
at 57, held that Aro was a contributory infringer within
the precise letter of §
271 (c). See also Aro I,
365 U. S,
at 341.
However, the language of §
271 (c) presents a question,
apparently not noticed by the parties or the courts below,
concerning the element of knowledge that must be
brought home to Aro before liability can be imposed. It
is only sale of a component of a patented combination
“knoioing the same to be especially made or especially
adapted for use in an infringement of such patent” that
is contributory infringement under the statute. Was Aro
“knowing” within the statutory meaning because—as it
admits, and as the lower courts found—it knew that its
replacement fabrics were especially designed for use in the
1952-1954 Ford convertible tops and were not suitable
for other use? Or does the statute require a further show-
ing that Aro knew that the tops were patented, and knew
also that Ford was not licensed under the patent so that
any fabric replacement by a Ford car owner constituted
infringement?
On this question a majority of the Court is of the view
that §
271 (c) does require a showing that the alleged
contributory infringer knew that the combination for
which his component was especially designed was both
patented and infringing.8 With respect to many of the
p. 489replacement-fabric sales involved in this case, Aro clearly
had such knowledge. For by letter dated January 2,
1954, AB informed Aro that it held the Mackie-Duluk
patent; that it had granted a license under the patent to
General Motors but to no one else; and that “It is obvious,
knowledge Congress meant to require was simply knowledge that the
component was especially designed for use in a combination and was
not a staple article suitable for substantial other use, and not
knowledge that the combination was either patented or infringing.
Their reasons may be summarized as follows:
(1) No other result would have been consistent with the congres-
sional intention to codify the case law of contributory infringement as
it existed prior to this Court’s decision in Mercoid Corp. v. Mid-Con-
tinent Investment Co.,
320 U. S. 661—and to do this not only in gen-
eral, see note 6, supra, and p. 492, infra, but with specific reference to
the knowledge requirement. See Hearings, supra, note 6, at 159-160,
163-165. Under that case law, liability was established by a showing
that the component was suitable for no substantial use other than in
the patented combination, since it was “the duty of the defendant to
see to it that such combinations which it is intentionally inducing and
promoting shall be confined to those which may be lawfully orga-
nized.” Thomson-Houston Elec. Co. v. Ohio Brass Co., supra, 80
F., at 720-723. Accord, Mercoid Corp. v. Mid-Continent Investment
Co., supra,
320 U. S., at 664; 3 Walker, Patents (Deller ed. 1937), at
1764-1765, and cases cited. See Freedman v. Friedman,
242 F. 2d
364 (C. A. 4th Cir. 1957).
(2) The House Committee’s change in the language of the bill
concerning the knowledge requirement, see the opinion of Mr . Jus -
ti ce Bla ck, post, pp. 524-528, was not intended to limit liability to
cases where the alleged contributory infringer had knowledge of the
patented or infringing nature of the combination; it was intended
merely to assure that the statute would be construed to require knowl-
edge that the article sold was a component of some combination and
was especially designed for use therein, rather than simply knowledge
that the article was being sold. See, e. g., the statement of Con-
gressman Crumpacker, Hearings, supra, at 175, objecting to the
original language on the ground that “the way it is phrased the word
‘knowingly’ refers directly to the word ‘sells.’ ” See also id., at 175—
176. While the representatives of a manufacturing concern and of
the Justice Department did urge the Committee to adopt the position
which the Court now holds it did adopt, none of the Congressmen
p. 490from the foregoing and from an inspection of the con-
vertible automobile sold by the Ford Motor Company,
that anyone selling ready-made replacement fabrics for
these automobiles would be guilty of contributory in-
fringement of said patents.” Thus the Court’s interpre-
tation of the knowledge requirement affords Aro no
defense with respect to replacement-fabric sales made
after January 2, 1954. It would appear that the over-
said anything to indicate agreement with these views or disagreement
with the contrary view expressed by the spokesman for the sponsors
of the bill. This yiew, as clearly stated on several occasions at the
Hearings, was that
“[Y]ou know that the component is going into that machine. You
don’t have to know that it is patented. You don’t have to know
the number of the patent, and you don’t have to know that the
machine that it is going into constitutes an infringement.” Id., at
175; see also id., at 160, 176.
(3) The suggestion that a person cannot be liable even for direct in-
fringement when he has no knowledge of the patent or the infringe-
ment is clearly refuted by the words of §
271 (a), which provides that
“whoever without authority makes, uses or sells any patented inven-
tion . . . infringes the patent,” with no mention of any knowledge
requirement. And the case law codified by §
271 has long recog-
nized the fundamental proposition that “To constitute an infringe-
ment of a patent, it is not necessary that the infringer should have
known of the existence of the patent at the time he infringed it or,
knowing of its existence, it is not necessary that he should have known
his doings to constitute an infringement.” 3 Walker, Patents (Deller
ed. 1937), § 453. See, e. g., United States v. Berdan Fire-Arms Mfg.
Co.,
156 U. S. 552, 566;
Sontag Chain Stores Co. v. National Nut Co.,
310 U. S. 281, 295;
Boyden v. Burke, 14 How. 575, 582.
(4) Section 287 of 35 U. S. C., quoted in the opinion of Mr .
Just ice Bla ck, post, p. 528, n. 14, does not require a different con-
clusion. That section prevents a patentee from recovering damages
for infringement unless he has marked the patented article with
notice of the patent. Since a patentee may hardly be expected to
mark the article when it has not been manufactured or sold by him,
but rather by an infringer, the section has been held not to apply to
such a situation. Wine Ry. Appliance Co. v. Enterprise Ry. Equip.
Co.,
297 U. S. 387. That of course is the situation here with respect
to the Ford cars.
p. 491whelming majority of the sales were in fact made after
that date, since the oldest of the cars were 1952 models
and since the average life of a fabric top is said to be
three years. With respect to any sales that were made
before that date, however, Aro cannot be held liable in
the absence of a showing that at that time it had already
acquired the requisite knowledge that the Ford car tops
were patented and infringing. When the case is re-
manded, a finding of fact must be made on this question
by the District Court, and, unless Aro is found to have had
such prior knowledge, the judgment imposing liability
must be vacated as to any sales made before January 2,
1954. As to subsequent sales, however, we hold, in
agreement with the lower courts, that Aro is liable for
contributory infringement within the terms of §
271 (c).
In seeking to avoid such liability, Aro relies on the Mer-
coid cases. Mercoid Corp. v. Mid-Continent Investment
Co.,
320 U. S. 661; Mercoid Corp. v. Minneapolis-Honey-
well Regulator Co.,
320 U. S. 680. Since those cases
involved essentially an application of the doctrine of pat-
ent misuse, which is not an issue in this case,9 they are not
p. 492squarely applicable to the contributory infringement
question here. On the other hand, they are hardly irrele-
vant. The Court in Mercoid said, among other things,
that the principle that “he who sells an unpatented part
of a combination patent for use in the assembled machine
may be guilty of contributory infringement” could no
longer prevail “against the defense that a combination
patent is being used to protect an unpatented part from
competition.”
320 U. S., at 668. As the Court recog-
nized, its definition of misuse was such as “to limit sub-
stantially the doctrine of contributory infringement” and
to raise a question as to “what residuum may be left.”
320 U. S., at 669. See Report of the Attorney General’s
National Committee to Study the Antitrust Laws (1955),
at 252. The answer to Aro’s argument is that Congress
enacted §
271 for the express purpose of reinstating the
doctrine of contributory infringement as it had been de-
veloped by decisions prior to Mercoid, and of overruling
any blanket invalidation of the doctrine that could be
found in the Mercoid opinions. See, e. g., 35 LT. S. C.
§§271 (c), (d); Hearings, supra, n. 6, at 159, 161-162;
and the Aro I opinions of Mr . Just ice Black ,
365 U. S.,
at 348-349 and nn. 3-4; Mr . Justice Harlan ,
id., at 378,
n. 6; and Mr . Justic e Brennan ,
id., at 365-367. Hence,
where Aro’s sale of replacement fabrics for unlicensed
Ford cars falls squarely within § 271 (c), and where Aro
has not properly invoked the misuse doctrine as to any
other conduct by CTR or AB, Mercoid cannot suc-
cessfully be employed to shield Aro from liability for
contributory infringement.10
Thus we hold that, subject to the reservation ex-
pressed at pp. 488-491, supra, with respect to sales made
before January 2, 1954, and subject to the further reser-
p. 493vations set forth in succeeding Parts of this opinion, Aro’s
sales of replacement fabrics for use in the Ford cars con-
stituted contributory infringement under §
271 (c).
II.11
Although we thus agree with the Court of Appeals that
Aro was liable for contributory infringement with respect
to the Ford cars, we find merit in a defense asserted by
Aro. In our view this defense negatives Aro’s liability
as to some of the replacement fabrics in question and, as
to the others, reduces substantially—quite possibly to a
mere nominal sum—the amount of recovery that CTR
may be awarded. The defense is based on the agreement
of July 21, 1955, between Ford and AB. See note 4,
supra. This agreement affected Aro’s liability differ-
ently, we think, depending upon whether the replace-
ment-fabric sales were made before or after the agreement
date. We shall first discuss its effect on liability for the
subsequent sales.
The agreement was made at a time when, as CTR
states in its brief, “Ford had already completed its manu-
facture of all the cars here involved.” Under it, Ford
agreed to pay AB $73,000 for certain rights under the
patent, which were defined by paragraph 1 of the
agreement as follows:
“1. AB hereby releases Ford, its associated com-
panies . . . [and] its and their dealers, customers
and users of its and their products, of all claims that
AB has or may have against it or them for infringe-
ment of said patents arising out of the manufacture,
use or sale of devices disclosed therein and manufac-
tured before December 31, 1955, other than the
‘replacement top fabrics’ licensed under paragraph 3.”
p. 494In paragraph 3, AB licensed Ford to make and sell
“replacement top fabrics” for the Mackie-Duluk top-
structures, receiving in return a royalty—separate from
the $73,000 lump-sum payment—of 5% of the net sales.
And in paragraph 5, AB expressly reserved the right
“to license under . . . said Mackie-Duluk pat-
ent . . . the manufacture, use and sale of replace-
ment top fabrics other than those supplied to, made
by or sold by Ford ... to the extent that AB is
entitled to reserve such right under 35 United States
Code, § 271 (1952).”
In a pretrial memorandum filed early in the lawsuit,
the District Court construed the agreement in the follow-
ing manner, which we think to be a correct interpretation
of the parties’ intention:
(1) With respect to all patented top-structures manu-
factured before July 21, 1955, and all replacement fabrics
installed before that date, it was a “release” to the parties
named—that is, Ford and its customers—of the claims for
infringement by manufacture, sale, or use of the patented
combination;
(2) With respect to any new structures manufactured
between July 21 and December 31, 1955 (it appears that
there were no such structures), the agreement was a
“future license” to Ford and its customers to make, sell,
and use the patented combination, but “excepting re-
placements” unless these were provided by Ford under
the special license granted by paragraph 3;
(3) With respect to the post-July 21 status of struc-
tures manufactured before July 21, the agreement was
also a “future license” to Ford and its customers of the
rights to make, sell, and use, but again, “excepting
replacements” not provided by Ford; and
(4) The agreement “demonstrated an intention not
to release” or license any persons other than Ford or
its customers; in particular, the parties did not intend
p. 495to release or license contributory infringers like Aro in
respect of replacement fabrics sold either before or after
July 21.
Considering the legal effect of the agreement as so con-
strued, the District Court went on to rule that if the
fabric replacement should be held to constitute repair
rather than reconstruction (as this Court did subse-
quently hold in Aro I), then:
(a) Aro would be liable for contributory infringement
as to replacements made before July 21, 1955, since “I
do not construe the agreement to release contributory
infringers for rights of action already accrued”;
(b) however, despite the intention of the parties, Aro
would not be liable as to replacements made after July 21,
1955, since “If replacement is legitimate repair, no aver-
age owner can do-it-yourself, and he must be free to go
to persons in the position of defendants without appre-
hension on their part.”
The distinction between pre-agreement and post-agree-
ment sales subsequently became irrelevant to the District
Court’s view of the case, when it held after trial that re-
placement of the fabrics constituted reconstruction rather
than repair; the Court’s interlocutory judgment for CTR
thus held Aro liable with respect to all the Ford cars in
question. When this Court in Aro I reversed the ruling
on the reconstruction-repair issue, the only reference in
the opinions to the Ford cars took the view that Aro
should be held liable only in respect of replacements
made on those cars “before July 21, 1955,”
365 U. S., at
368 (concurring opinion), and thus agreed with the dis-
tinction originally drawn by the District Court. The
present opinion of the Court of Appeals, however, in rein-
stating the Ford car portion of the interlocutory judg-
ment for CTR without consideration of this distinction,
appears to have held Aro liable in respect of replacement
fabrics sold for the 1952-1954 Ford cars not only before
729-256 0-65-36
p. 496Opinion of the Court. 377U.S.
July 21, 1955, but also after that date and—so long as the
cars remain1 on the road—up to the present and into the
future.
CTR’s argument in support of this result emphasizes
that the agreement in terms ran in favor only of Ford
and Ford’s customers and not of third parties like Aro,
and that it expressly excepted “replacement top fabrics”
from the scope of the rights it granted. Reliance is also
placed on testimony that the amount to be paid by Ford
under the agreement was set as low as $73,000 only
because of a clear understanding between the parties that
such payment would not affect AB’s rights to recover
from persons in the position of Aro.12 CTR thus argues:
“If the Ford agreement had never been made at
all, it is clear that it would have been proper to
require that Aro pay royalties, insofar as infringing
Ford cars are concerned, even up to the present time.
This being the case, it is clear that it was proper
for the agreement to expressly recognize and to ex-
pressly exclude Aro’s liability from its terms. Since
Ford refused to purchase any rights for Aro, either
before or after July 21, 1955, Aro is liable for its
Ford repair activities both before and after that
date.”
Insofar as replacement fabrics sold “after that date”
are concerned, we do not agree. We think the agree-
ment’s attempt to reserve rights in connection with future
sales of replacement fabrics was invalid. By the agree-
p. 497ment AB authorized the Ford car owners, in return for a
payment from Ford, to use the patented top-structures
from and after July 21, 1955. Since they wTere authorized
to use the structures, they were authorized to repair them
so as “to preserve [their] fitness for use . . . .” Aro I,
365 U. S., at 345, quoting
Leeds & Catlin Co. v. Victor
Talking Machine Co., 213 U. S. 325, 336. The contrary
provisions in the agreement, purporting to restrict the
right of use and repair by prohibiting fabric replacement
unless done with fabrics purchased from Ford or some
other licensee, stand condemned by a long line of this
Court’s decisions delimiting the scope of the patent grant.
When the patentee has sold the patented article or author-
ized its sale and has thus granted to the purchaser an “im-
plied license to use,” it is clear that he cannot thereafter
restrict that use; “so far as the use of it was concerned,
the patentee had received his consideration, and it was
no longer within the monopoly of the patent.” Adams v.
Burke, 17 Wall. 453, 456. In particular, he cannot impose
conditions concerning the unpatented supplies, ancillary
materials, or components with which the use is to be
effected. E. g., Carbice Corp. v. American Patents De-
velopment Corp.,
283 U. S. 27;
Mercoid Corp. v. Mid-
Continent Investment Co., 320 U. S. 661; United States
v. Loews, Inc.,
371 U. S. 38, 46. It follows that here,
where the patentee has by the Ford agreement explicitly
authorized the purchasers to use the articles, the patentee
cannot thereafter restrict that use by imposing a condi-
tion that replacement parts may be purchased only from
a licensed supplier.
With the restriction thus eliminated from considera-
tion, it is clear that Aro cannot be liable for contributory
infringement in connection with sales of replacement fab-
rics made after July 21, 1955. After that date the Ford
car owners had authority from the patentee—indeed, had
p. 498a “license” 13—fully to use and repair the patented struc-
tures. Hence they did not commit direct infringement
under §
271 (a) when they had the fabrics replaced;
hence Aro, in selling replacement fabrics for this pur-
pose, did not commit contributory infringement under
§271 (c). The case as to the post-agreement sales is thus
squarely ruled by Aro I. It was held there, despite AB’s
attempt to reserve the right to license sales of replace-
ment fabrics, that General Motors car owners, who were
authorized to use the patented structures by virtue of the
license granted General Motors by AB, performed noth-
ing more than “permissible repair” when they replaced the
worn-out fabrics, and hence that there was no direct in-
fringement by the owners to which Aro, by selling the
replacement fabrics, could contribute. In other words,
since fabric replacement was “repair” rather than “recon-
struction,” it was merely an aspect of the use of the pat-
ented article, and was thus beyond the patentee’s power
to control after the use itself had been authorized. So
here, the Ford car owners were authorized to use the pat-
ented structures after July 21,1955, by virtue of the agree-
ment between AB and Ford. Hence they were likewise
entitled, despite AB’s attempt to reserve this right, to per-
form the “permissible repair” of replacing the worn-out
fabrics; hence, just as in Aro I, the car owners by replac-
ing the fabrics committed no direct infringement to which
Aro’s sales could contribute. “[I]f the purchaser and
user could not be amerced as an infringer .certainly one
p. 499who sold to him . . . cannot be amerced for contributing
to a non-existent infringement.” Aro I,
365 U. S., at 341.
CTR would have it that this result is inconsistent with
Birdsell v. Shaliol,
112 U. S. 485, and Union Tool Co. v.
Wilson,
259 U. S. 107. In our view it is not. Birdsell
allowed the patentee to hold one infringer liable for use
of the patented machines after obtaining a judgment
against another infringer for the manufacture and sale of
the same machines; Union Tool held infringement to exist
where the defendant, after being held liable for the manu-
facture and sale of certain infringing machines, sold spare
parts for use in the same machines. Both cases turned
upon the fact that the patentee had not collected on the
prior judgment and thus had not received any compensa-
tion for the infringing use—or, indeed, any compensation
at all.14 Here, in contrast, the amount paid by Ford
under the agreement was expressly stated to include com-
pensation for the use of the patented structures by Ford’s
purchasers; moreover, the agreement covered future use
and in this respect operated precisely like a license, with
the result that after the agreement date there was simply
no infringing use for which the patentee was entitled to
compensation. See Birdsell v. Shaliol, supra,
112 U. S.,
at 487. In sum, AB obtained its reward for the use of
the patented structures under the terms of the agreement
with Ford; CTR cannot obtain from Aro here another
reward for the same use.
p. 500We therefore hold, in agreement with the District
Court’s original view, that Aro is not liable for replace-
ment-fabric sales 15 made after July 21, 1955. Insofar as
the judgment of the Court of Appeals imposes liability
for such sales, it is reversed?6
III.17
Turning to the question of replacement-fabric sales
made before July 21, 1955, we agree with the District
Court that the agreement between AB and Ford did not
negative Aro’s liability for these sales. With respect to
the post-agreement sales the agreement necessarily ab-
solved Aro of liability, its intention to the contrary not-
withstanding, because it had the effect of precluding any
direct infringement to which Aro could contribute. With
respect to the pre-agreement sales, however, Aro’s con-
tributory infringement had already taken place at the
time of the agreement. Whatever the agreement’s effect
on the amount recoverable from Aro—a matter to be dis-
cussed in Part IV of this opinion—it cannot be held, in
the teeth of its contrary language and intention, to have
erased the extant infringement.
It is true that a contributory infringer is a species of
joint-tortfeasor, who is held liable because he has con-
tributed with another to the causing of a single harm to
the plaintiff. See Wallace v. Holmes, 29 Fed. Cas. 74,
80 (No. 17,100) (C. C. D. Conn. 1871); Thomson-Hous-
ton Elec. Co. v. Ohio Brass Co., supra, 80 F., at 721 ; Rich,
p. 50121 Geo. Wash. L. Rev. 521, 525 (1953). It is also true
that under the old common-law rule, a release given to one
joint-tortfeasor necessarily released another, even though
it expressly stated that it would have no such effect. See
Prosser, Torts (2d ed. 1955), at 243-244. Under this rule
Aro’s argument on this point would prevail, since the
agreement did release Ford’s purchasers for their infring-
ing use of the top-structures before the agreement date,
and that was the use to which Aro contributed. See
Schiff v. Hammond Clock Co.,
69 F. 2d 742, 746 (C. A.
7th Cir. 1934), reversed for dismissal as moot,
293 U. S.
529. But the rule is not applicable. Even in the
area of nonpatent torts, it has been repudiated by stat-
ute or decision in many if not most States, see Prosser,
supra, at 245, and by the overwhelming weight of schol-
arly authority. E. g., American Law Institute, Restate-
ment of Torts (1939), § 885 (1) and Comments b-d. And
application of the rule to contributory infringement has
been rejected by this Court. In Birdsell v. Shaliol, supra,
112 U. S, at 489, the Court applied to a patent case the
proposition that “By our law, judgment against one joint
trespasser, without full satisfaction, is no bar to a suit
against another for the same trespass.” What is true
of a judgment is true of a release. See Prosser, supra,
at 241-244. A release given a direct infringer in re-
spect of past infringement, which clearly intends to
save the releasor’s rights against a past contributory
infringer, does not automatically surrender those rights.
Thus the District Court was correct in denying that
“defendants are entitled to the fortuitous benefit of the
old joint tort-feasor rule.” The mere fact that the agree-
ment released Ford and Ford’s customers for their past
infringement does not negate Aro’s liability for its past
infringement. Hence the judgment of the Court of Ap-
peals, insofar as it relates to Ford car replacement-fabric
sales made by Aro before July 21, 1955—and subject to
p. 502the reservation set forth at pp. 488-491, supra, with
respect to sales made before January 2, 1954—is affirmed;
accordingly, the case is remanded to the District Court
for a determination of damages and for such other pro-
ceedings as that court deems appropriate.
IV.18
The case must now be remanded for a determination of
the damages to be recovered from Aro in respect of the
infringing pre-agreement sales. It is true that the lower
courts have not yet expressly addressed themselves to the
damages issue, and that the parties have not argued it
here. Nevertheless, it appears that all concerned in this
litigation have shared a specific assumption as to the
measure of damages that would be available to CTR if
it succeeded in establishing infringement. Because we
sharply disagree with that assumption, and because ex-
pression of our views may obviate the need upon remand
for lengthy proceedings before a master in this already
over-long litigation, we deem it in the interest of efficient
judicial administration to express those views at this time.
In brief, it is our opinion that the Ford agreement, while
it does not negate Aro’s liability for the prior sales as it
does for the subsequent ones, does have the effect of limit-
ing the amount that CTR can recover for the pre-agree-
ment infringement, and probably of precluding recovery I
of anything more than nominal damages.
If the sum paid by Ford for the release of it and its I
customers constituted full satisfaction to AB for the I
infringing use of the patented structures, we think it clear !
that CTR cannot now collect further payment from Aro I
p. 503for contributing to the same infringing use. The rule
is that
“Payments made by one tortfeasor on account of a
harm for which he and another are each liable, di-
minish the amount of the claim against the other
whether or not it was so agreed at the time of pay-
ment and whether the payment was made before or
after judgment . . . .” Restatement of Torts, supra,
§ 885 (3).
It has been said that “all courts are agreed” upon such a
rule. Prosser, supra, at 246. And its applicability to
contributory-infringement cases has been clearly indi-
cated by this Court. Birdsell v. Shaliol, supra,
112 U. S.,
at 488-489; see Hazeltine Corp. n . Atwater Kent Mfg.
Co.,
34 F. 2d 50, 52 (D. C. E. D. Pa. 1929). Indeed,
if “actual damages” or “full compensation” paid by
a maker-and-seller can have the effect of releasing a user,
as was indicated in Birdsell, such a result should follow
a fortiori where, as here, the damages paid were expressly
stated to be compensation for use of the device, and the
person subsequently sued is a contributory infringer liable
merely for contributing to the same infringing use. In
such a case full payment by or on behalf of the direct
infringer leaves nothing to be collected from the contribu-
tory infringer. We therefore find it necessary to consider
whether the payment by Ford to AB constituted full pay-
ment for the infringing use committed directly by Ford’s
purchasers and contributorily by Aro.
This depends upon the measure and total amount of
recovery to which CTR and AB are entitled. In partic-
ular, if they are entitled to recover a royalty from Aro
on the infringing sales of replacement fabrics, it is clear
that no such recovery was included in the payment from
Ford, whose representatives “weren’t interested in buying
any sort of a release or license or anything else that
p. 504would help out these replacement top people.” See note
12, supra. CTR does contend, and all involved in this
litigation have apparently assumed, that a judgment
holding Aro liable for contributory infringement will
result in recovery of such a royalty on Aro’s sales.19 This
is the assumption with which we disagree. It is our view
that despite our affirmance of the judgment against Aro
as to sales made before the agreement date, no such
royalty will be available to CTR as part of its recovery.
We are, indeed, doubtful that CTR can properly be
allowed recovery of anything more than nominal damages
from Aro.
The measure of recovery for patent infringement is
governed by 35 U. S. C. §
284, which provides:
“Upon finding for the claimant the court shall
award the claimant damages adequate to compensate
for the infringement, but in no event less than a
reasonable royalty for the use made of the inven-
tion by the infringer, together with interest and
costs as fixed by the court.
“When the damages are not found by a jury, the
court shall assess them. In either event the court
may increase the damages up to three times the
amount found or assessed.”
It is presumably the language “in no event less than a
reasonable royalty” that has led to the assumption noted
19AB’s counsel asserted on deposition: “I believe we would have
the right to arrive at royalty and otherwise consider as patented the
replacement top . . . When asked by the District Court at a
hearing concerning a judgment bond how much he expected to
recover, CTR’s counsel replied: “I suppose a reasonable royalty
would be 5 per cent.” Considerable evidence was introduced before
the Master as to Aro’s income from infringing sales and as to royalty
rates fixed in licenses granted by CTR or AB to other replacement-
fabric suppliers. See also the statement of AB’s counsel quoted in
note 12, supra, and the statement in CTR’s brief quoted supra, at 496.
p. 505above. But that assumption ignores the fact—clear
from the language, the legislative history, and the prior
law—that the statute allows the award of a reasonable
royalty, or of any other recovery, only if such amount
constitutes “damages” for the infringement. It also
ignores the important distinction between “damages” and
“profits,” and the relevance of this distinction to the
1946 amendment of the statute.
“In patent nomenclature what the infringer makes is
‘profits’; what the owner of the patent loses by such in-
fringement is ‘damages.’ ”
Duplate Corp. v. Triplex
Safety Glass Co., 298 U. S. 448, 451. Profits and dam-
ages have traditionally been all-inclusive as the two basic
elements of recovery. Prior to 1946, the statutory pre-
cursor of the present §
284 allowed recovery of both
amounts, reading as follows:
“[U]pon a decree being rendered in any such case
for an infringement the complainant shall be en-
titled to recover, in addition to the profits to be
accounted for by the defendant, the damages the
complainant has sustained thereby . . . .” R. S.
§ 4921, as amended, 42 Stat. 392.
By the 1946 amendment, Act of August 1, 1946, c. 726, § 1,
60 Stat. 778, 35 U. S. C. (1946 ed.), §§ 67, 70, the statute
was changed to approximately its present form, whereby
only “damages” are recoverable.20 The purpose of the
change was precisely to eliminate the recovery of profits
as such and allow recovery of damages only.
“The object of the bill is to make the basis of
recovery in patent-infringement suits general dam-
ages, that is, any damages the complainant can
p. 506prove, not less than a reasonable royalty, together
with interest from the time infringement occurred,
rather than profits and damages.” H. R. Rep. No.
1587, 79th Cong., 2d Sess. (1946), to accompany
H. R. 5311, at 1-2; S. Rep. No. 1503, 79th Cong., 2d
Sess. (1946), to accompany H. R. 5311, at 2.21
There can be no doubt that the amendment succeeded
in effectuating this purpose; it is clear that under the
present statute only damages are recoverable. See, e. g.,
Ric-Wil Co. v. E. B. Kaiser Co., 179 F. 2d 401, 407 (C. A.
7th Cir. 1950), cert, denied, 339 U. S. 958; Livesay Win-
dow Co. v. Livesay Industries, Inc., 251 F. 2d 469, 471-472
(C. A. 5th Cir. 1958); Laskowitz v. Marie Designer, Inc.,
119 F. Supp. 541, 554-555 (D. C. S. D. Cal. 1954); Cullen,
28 J. Pat. Off. Soc. 838 (1946); Wolff, 28 J. Pat. Off.
Soc. 877 (1946).
The 1946 amendment is of crucial significance to the
total amount of CTR’s recovery against Aro and hence
to the amount, if any, that may still be recovered after
receipt of the payment from Ford. When recovery of
the infringer’s profits as such was allowed, the rule was
that “complainant’s damages are no criterion of defend-
ant’s profits”; it was “immaterial that the profits made
by the defendant would not have been made by the
plaintiff.” 3 Walker, Patents (Deller ed. 1937), § 845,
at 2186. And in cases of joint infringement this Court
was said to have declared the doctrine that, whereas
“when the total damage sustained has been paid by one
tort-feasor, the damages cannot be duplicated through a
recovery against another,” nevertheless, “every infringer
of a patent right may be made to give up whatever profits
he has derived from the infringement, and . . . one in-
p. 507fringer is not relieved by payment by another infringer,
but each is accountable for the profits which he has re-
ceived.” Hazeltine Corp. v. Atwater Kent Mfg. Co.,
supra,
34 F. 2d 50, 52. Under such a rule, CTR might
well argue that the payment received from Ford could
have no effect in preventing it from recovering the profits
made by Aro—which might even exceed the amount of a
royalty on Aro’s sales.
But the present statutory rule is that only “damages”
may be recovered. These have been defined by this
Court as “compensation for the pecuniary loss he [the
patentee] has suffered from the infringement, without
regard to the question whether the defendant has gained
or lost by his unlawful acts.”
Coupe v. Royer, 155 U. S.
565, 582. They have been said to constitute “the differ-
ence between his pecuniary condition after the infringe-
ment, and what his condition would have been if the in-
fringement had not occurred.” Yale Lock Mfg. Co. v.
Sargent,
117 U. S. 536, 552. The question to be asked in
determining damages is “how much had the Patent
Holder and Licensee suffered by the infringement. And
that question [is] primarily: had the Infringer not
infringed, what would Patent Holder-Licensee have
made?” Livesay Window Co. v. Livesay Industries,
Inc., supra, 251 F. 2d, at 471.
Thus, to determine the damages that may be recovered
from Aro here, we must ask how much CTR suffered by
Aro’s infringement—how much it would have made if
Aro had not infringed. Asking that question, we may
assume first that the agreement of July 21, 1955, did not
exist and that AB had not collected a cent from Ford.
Even on that assumption, we would find it difficult
to see why CTR’s damages should be measured by a
royalty on Aro’s sales. CTR and AB were not de-
prived of such a royalty by Aro’s infringement, for they
could not have licensed Aro’s sales in any event; they
p. 508were denied the right to do so in Aro I, and would still
be denied it even if they had received no royalties on the
patented combinations themselves. For the right could
not be granted without allowing the patentee to “derive its
profit, not from the invention on which the law gives it a
monopoly but from the unpatented supplies with which it
is used . . . .” Motion Picture Patents Co. v. Universal
Film Mfg. Co.,
243 U. S. 502, 517; Mercoid Corp. v.
Mid-Continent Investment Co., supra,
320 U. S., at 666-
667. It would be absurd to say that what CTR could
not recover from Aro in Aro I after it had licensed Gen-
eral Motors, it could recover here if it had stood by and
let Ford infringe—as it apparently did, see p. 511, infra—
and had then brought suit against Aro before settling
with Ford. The rules prohibiting extension of the pat-
ent monopoly to unpatented elements are not so readily
circumvented. This does not mean, of course, that CTR
would have no remedy for Aro’s contributory infringe-
ment. It could in a proper case obtain an injunction;
it could recover such damages as had actually been suf-
fered from the contributory infringement by virtue of the
prolongation of the use of the infringing automobiles; it
could in a case of willful or bad-faith infringement recover
punitive or “increased” damages under the statute’s
trebling provision; and it could perhaps—we express no
view on the question—recover from Aro a royalty on
Ford’s sales of the patented top-structures, even though
such damages were primarily caused not by Aro’s infringe-
ment but by Ford’s, in a case where they could not be
recovered from Ford or Ford’s customers. It is difficult
to conceive of any instance, however, in which actual
damages could properly be based on a royalty on sales of
an unpatented article used merely to repair the patented
structure.
If CTR thus could not collect a royalty on Aro’s sales
in the absence of any payment from Ford, it surely can-
p. 509not do so here after AB, in return for $73,000, has re-
leased Ford and Ford’s customers from liability for the
direct infringement to which Aro contributed. -Are there
indeed any actual damages that CTR can recover from
Aro after receiving $73,000 from Ford? The answer de-
pends on whether CTR and AB suffered any loss by Aro’s-
infringement—which depends in turn on how much they
would have made if Aro had not infringed. But in
view of the merely contributory nature of Aro’s infringe-
ment, this leads in turn to the question how much CTR
and AB would have made if Ford had not infringed; for
in that event—as was held in Aro I with respect to the
General Motors cars, and as we have held in Part II,
supra, with respect to the post-agreement Ford car sales—
l Aro could not have contributorily infringed. If Ford had
not infringed, AB would have made a royalty on Ford’s
sales of the patented top-structures—as it made such a
royalty under its license to General Motors in Aro I. The
amount that would thus have been received must be com-
pared, however, with the amount that AB in fact received
from Ford. We shall assume for the present—although
CTR will have an opportunity to disprove the assump-
tion upon remand—that the amount received by AB
under the agreement was the same amount it would have
received had it licensed Ford in the first place to produce
the same number of convertible tops.22 On this assump-
tion, AB is just as well off now as it would have been if
Ford had never infringed the patent. And since if Ford
p. 510had not infringed, Aro could not have contributorily
infringed, it follows that what CTR and AB would have
made if Aro had not infringed was precisely what they did
make by virtue of the Ford agreement. Their pecuniary
position was not rendered one cent worse by the total
infringement to which Aro contributed, and hence they
are not entitled—on the assumption stated above as to
the payment by Ford—to anything more than nominal
damages from Aro.
To allow recovery of a royalty on Aro’s sales after re-
ceipt of the equivalent of a royalty on Ford’s sales, or to
allow any recovery from Aro after receipt of full satis-
faction from Ford, would not only disregard the statutory
provision for recovery of “damages” only, but would be
at war with virtually every policy consideration in this
area of the law. It would enable the patentee to derive
a profit not merely on unpatented rather than patented
goods—an achievement proscribed by the Motion Picture
Patents and Mercoid cases, supra—but on unpatented
and patented goods. In thus doubling the number of
rewards to which a patentee is entitled “under our pat-
ent law as written,” see Mr . Justi ce Black concurring
in Aro I,
365 U. S., at 360, it would seriously restrict the
purchaser’s long-established right to use and repair an
article which he has legally purchased and for the use I
of which the patentee has been compensated. See Adams
v. Burke, 17 Wall. 453. The patentee could achieve this
result, moreover, by the simple' tactic of not licensing or
suing the manufacturer in the first place, but rather
standing by while the direct infringement occurs, thus I
allowing contributory infringements to spring up around I
him, with the result of bringing within the reach of his I
monopoly unpatented items that would never have been I
there if the manufacturer had been licensed from the start. I
And little is sacrificed, for it is almost always possible to I
sue or settle with the manufacturer at a later date. This I
p. 511in fact seems to have been the strategy that AB employed
here. It first sent Ford a notice of infringement—accord-
ing to the deposition testimony of AB’s own counsel—in
late 1953, “a day or so after we got the patent.” Yet it
did nothing to stop Ford’s infringement, and did not settle
with Ford until 18 months later, by which time all the
automobiles in question had been manufactured. In
view of the apparently deliberate delay and of the un-
questionably solvent status of the infringer, it indeed
seems unlikely that the amount paid for the release wyas
less than would have been paid under a license. In any
event, the notion is intolerable that by such delay CTR
and AB could entitle themselves to collect from Aro what
they could not have collected had Ford been licensed
from the start as General Motors was.
To achieve such a result through use of the contribu-
tory infringement doctrine would be especially ironic, in
view of the purpose of that doctrine as set forth in case
law and commentary and as presented to the Congress in
urging passage of §
271 (c). That purpose is essentially,
as was stated in the earlier versions of the bill that be-
came §
271 (c), “to provide for the protection of patent
rights where enforcement against direct infringers is im-
practicable,” H. R. 5988, 80th Cong., 2d Sess.; H. R.
3866, 81st Cong., 1st Sess. At the hearings on §
271 (c)
itself, Mr. Rich, see. n. 6, supra, explained to the sub-
committee that “There may be twenty or thirty percent of
all the patents that are granted that cannot practically be
enforced against direct infringers .. ..” Hearings, supra,
n. 6, at 160.23 Such a purpose might have been appli-
cable here if CTR and AB had been unable to en-
p. 512force the patent against Ford (a rather unlikely event),
since it would indeed have been impractical to sue every
one of the car owners. But where the patentee has in
fact enforced the patent against so solvent and accessible
a direct infringer as Ford, it is difficult to see why it should
then be allowed to invoke the contributory infringement
doctrine—designed for cases “where enforcement against
direct infringers is impracticable”—so as to enforce the
patent a second time and obtain a reward that it could
not extract from a direct infringer alone. Whatever the
result might have been under the old “damages and
profits” provision, no such perversion of the congressional
purpose is possible within the rule allowing recovery of
“damages” only.
Hence we think that after a patentee has collected from
or on behalf of a direct infringer damages sufficient to put
him in the position he would have occupied had there
been no infringement, he cannot thereafter collect actual
damages from a person liable only for contributing to the
same infringement. This principle is but an application
of the rule that full satisfaction received from one tort-
feasor prevents further recovery against another. It is
consistent with the Court’s opinion in Birdsell v. Shaliol,
supra,
112 U. S., at 488-489. See also George Haiss Mfg.
Co. v. Link-Belt Co.,
63 F. 2d 479, 481 (C. A. 3d Cir.
1932); Buerk n . Imhaeuser, note 14, supra, 4 Fed. Cas.
597. And it is squarely in accord with a recent decision
of the Court of Appeals for the Second Circuit. Farrand
Optical Co., Inc., v. United States,
325 F. 2d 328, 335
(C. A. 2d Cir. 1963). Nor is there any authority, even
in lower courts, directly to the contrary. Of the many
cases cited by CTR for the correct proposition that use
or repair of an infringing structure constitutes infringe-
ment, relatively few deal at all with the question of
amount of recovery. Some of these, it is true, do allow
recovery on sales of infringing machines and a further
p. 513recovery on sales of spare parts for those machines. But
they are all distinguishable; either the parts themselves
were patented,24 or the infringing parts-supplier had sold
the machines as well and thus had arguably taken the
sales of both machines and parts away from the patentee,25
or the overlapping recovery allowed from the direct and
contributory infringers was one of profits rather than
damages.26
In the Farrand case, supra, the payment by the direct
infringer was made under judicial decree, and there could
thus be no question but that it represented full compen-
sation for the infringing use. Where a private release of
past infringement which does not purport to release
others is involved, the adequacy of the compensation
must always be a question of fact. Hence here, while it
seems unlikely that Ford’s payment under the agreement
was any less than would have been paid under a license—
that is, anything less than full satisfaction to AB for the
infringing use committed directly by Ford’s purchasers
and contributorily by Aro—we think the case must never-
theless be remanded for findings on the question. We
would also allow the lower courts to consider whether
Aro’s conduct has been such as to warrant an award of
punitive or increased damages, although we think that
very unlikely.
Concurrence — White J.
p. 514Whi te, J., concurring. 377U.S.
made after July 21, 1955. The judgment is affirmed
insofar as it holds Aro liable with respect to sales made
before that date, but subject to the reservation based on
the knowledge requirement with respect to sales made
before January 2, 1954. The case is remanded to the
District Court for further proceedings consistent with
this opinion.
It is so ordered.
Mr . Justi ce White , concurring.
I agree with my Brother Black that the plain lan-
guage and legislative history of § 271 (c) require the
alleged contributory infringer to have knowledge of the
infringing nature of the combination to which he is
contributing a part. Otherwise I share Mr . Justi ce
Brennan ’s view of this case.
Section 271 (a) imposes no comparable requirement of
knowledge in the case of the direct infringer who makes
or uses the patented combination and § 287 does not say
that one who makes or uses without knowledge is not
infringing. It specifies that the “infringer” is not liable
for damages until notice of the “infringement.” In any
event, § 287, as my Brother Brennan says, is not appli-
cable here under Wine Ry. Appliance Co. v. Enterprise
Ry. Equipment Co., 297 U. S. 387, because the patentee
has not manufactured the article and has had no oppor-
tunity to mark it in accordance with § 287.
Here the patentee gave notice to Aro and I think it is
liable on Ford tops sold by it after that date, but not
before, unless it had knowledge from other sources.
After the notice date, the knowledge requirement of
§ 271 (c) was satisfied and the use of Ford cars by the
owners thereof was direct infringement providing the
necessary predicate for contributory infringement under
§ 271(c).
Dissent — Black J.
I
p. 515Mr . Just ice Black , with whom The Chief Justic e ,
Mr . Justic e Douglas and Mr . Justi ce Clark join,
dissenting.
For a number of reasons I would reverse the judgment,
and reinstate the order of dismissal of the District Court.
With regret I find it necessary to disagree with the
inferences the Court draws from the past history of this
case. Respondent Convertible held exclusive rights for
Massachusetts in a combination patent on a convertible
automobile top, the combination consisting of wood or
metal supports, a fabric cover, and a mechanism to seal
the fabric against the side of the automobile in order to
keep out weather. None of the elements of the combina-
tion was patented or patentable. During the years in
question General Motors Corporation and the Ford
Motor Company manufactured automobiles with tops
like those described in the patent. General Motors had
a license from Convertible authorizing it to do so. Ford
did not. Petitioner Aro manufactured and sold fabric
replacement covers which were purchased by owners of
both General Motors and Ford cars when the covers orig-
inally installed on the cars wore out. Convertible settled
a claim it made against Ford for direct infringement, and
did not sue Ford dealers or Ford car owners. It main-
tained also that the individual General Motors and Ford
car owners who replaced their worn-out covers with Aro
' replacement covers by doing so directly infringed the com-
bination patent. Convertible did not sue the individual
car owners who patched or replaced the worn-out fabric,
but it did bring this suit against Aro, charging that Aro by
selling the replacement fabric thereby helped the indi-
vidual car owners infringe and so became liable as a con-
p. 516Bla ck, J., dissenting. 377 U. S.
tributory infringer under 35 U. S. C. § 271 (c).1 The Dis-
trict Court held that the patent was valid and that Aro
had been guilty of contributory infringement; it enjoined
Aro from further alleged infringements and ordered an ac-
counting to determine the damages due Convertible from
Aro’s sales of replacement fabrics to owners both of Gen-
eral Motors and of Ford cars. 119 U. S. P. Q. 122. The
Court of Appeals affirmed the judgment, 270 F. 2d 200,
and we granted certiorari to review it. We reversed the
judgment. Aro Mfg. Co. v. Convertible Top Replace-
ment Co., 365 U. S. 336. We denied a petition for rehear-
ing or alternative motion for amendment or clarification
in which Convertible argued that our reversal applied
only to replacements of General Motors, and not Ford,
cars. 365 U. S. 890.
When the District Court received the mandate of this
Court, it entered judgment dismissing the complaint on
the ground that this Court’s decision and mandate had
reversed the prior judgment in its entirety. But Con-
vertible appealed the dismissal to the Court of Appeals.
That court said:
“The puzzling question is whether the Supreme
Court in reversing this court intended to reverse
in toto or only to reverse insofar as replacement tops
for General Motors cars were concerned.” 312 F. 2d
52, 56 (C.
p. 517date, held that this Court when it said “Reversed” at the
end of its opinion had meant to reverse, not the entire
judgment, but only that part of the judgment enjoining
Aro from selling replacement fabrics for General Motors
cars, which were made under licenses, and ordering an
accounting for such sales in the past; the Court of Ap-
peals said that this Court had in effect affirmed the earlier
judgment insofar as that judgment concerned replace-
ments for Ford fabrics. This Court today, in affirming
the Court of Appeals’ judgment, says:
“Our decision dealt, however, only with the General
Motors and not with the Ford cars.” Ante, p. 479.
The Court’s statement of what we did is, I think, com-
pletely refuted by the record in this case.
The opinion of the Court was delivered by Mr. Justice
Whittaker. That opinion was joined by The Chief
Justic e , Mr . Justi ce Black , Mr . Justice Douglas , and
Mr . Justice Clark . The grounds for the Court’s opin-
ion, as I shall point out, applied alike to the repair of
Ford cars which had originally been sold by the manu-
facturer without a license from Convertible, and to Gen-
eral Motors cars that had been sold with such a license.
Mr . Justic e Brennan , however, dissented from the
grounds of the Court’s opinion although he concurred in
the judgment of reversal “except, however, as to the relief
granted respondent in respect of the replacements made
on Ford cars before July 21, 1955.”
365 U. S., at 368.
Mr . Justic e Harlan , joined by Justices Frankfurter and
Stewart , dissented from the Court’s opinion and from
its judgment in its entirety.
365 U. S., at 369. His
grounds for dissenting from the Court’s opinion were sub-
stantially the same as those of Mr . Justi ce Brennan .2
p. 518The difference between Mr . Just ice Harlan ’s dissent
and Mr . Justi ce Brennan ’s opinion concurring in the
Court’s judgment “except ... as to the relief granted . . .
in respect of the replacements made on Ford cars” was a
very minor one: both agreed, contrary to what the Court
decided, that a person could be held liable for contribu-
tory infringement of a combination patent, even though
he furnished a replacement for only a part of the combina-
tion, if the part replaced was important enough for the
substitution to amount to “reconstruction” rather than
merely “repair” of the device; Mr . Justi ce Brennan ,
however, believed that the question whether there had
been a “reconstruction” was for this Court to decide as a
matter of law and that there had not been a “reconstruc-
tion” here, while Mr . Justic e Harlan said that the trial
court’s findings that there had been a “reconstruction”
were decisive.
The difference in the approach of Justic es Harlan
and Brennan from that of Mr. Justice Whittaker, writ-
ing for the Court, is responsible, as I read the record, for
the fact that while the Court reversed the former judg-
ment in its entirety, Mr . Justi ce Brennan was willing
to reverse it only as to replacement fabrics sold for Gen-
eral Motors cars. Mr . Just ice Brennan believed that
since the licensed General Motors cars as built did not di-
rectly infringe the patent and Aro contributed to what did
not amount to a “reconstruction” of them, Aro as to them
was not a contributory infringer; the Ford cars, however,
were built by the manufacturer without a license from
Convertible, so Ford and the purchasers who used its cars
were allegedly direct infringers, and since Aro helped
Ford owners continue to use infringing tops it was a con-
tributory infringer even though the replacement covers
did not “reconstruct” the tops. The Court, however, in
Mr. Justice Whittaker’s opinion, rejected completely the
notion that there could ever be within the meaning of
p. 519§
271 (c) any contributory infringement—whether based
on a finding of “reconstruction” or on some other theory—
in a case like this one, where the patent was merely a com-
bination patent and the party which was sued for
infringement had sold replacements for only a part of
the combination. The Court’s opinion relied on the fact
that the fabric Aro used was not itself patented, that
Convertible had made no claim to invention based on
the fabric or its shape, pattern or design, and that a com-
bination patent gave its owner a monopoly on nothing
but the combination as a whole, since, Mr. Justice Whit-
taker said, “if anything is settled in the patent law, it is
that the combination patent covers only the totality of
the elements in the claim and that no element, separately
viewed, is within the grant.”
365 U. S., at 344. The
effect of the Court’s holding was that since the top fabric
was not itself patented, Convertible could not extend its
monopoly privileges regarding the combination as a whole
to the unpatented fabric cover part of the top. Ob-
viously, this holding of the Court and the reasons Mr.
Justice Whittaker gave for it did not depend on whether
the fabric wa? used on a Ford or on a General Motors car.
Mr. Justice Whittaker and the four members of the
Court who joined him were, of course, familiar with the
alleged distinction which Convertible tried to draw be-
tween its rights with reference to the General Motors
licensed cars on the one hand and the Ford unlicensed cars
on the other. The district judge in his opinion drew
the distinction,3 Convertible’s brief in this Court drew
the distinction,4 and Mr . Just ice Brennan drew the
3119 U. S. P. Q., at 124.
p. 520distinction in his opinion by concurring in the Court’s
judgment with respect to replacement fabrics for General
Motors cars but dissenting with respect to those for Ford
cars. It is apparent, therefore, that to the majority who
joined in Mr. Justice Whittaker’s opinion the asserted dis-
tinction was simply irrelevant, since Convertible as the
holder of a combination patent could under no circum-
stances prevent others from making and supplying unpat-
ented and unpatentable replacement parts for any ele-
ment of the combination. The Court’s opinion by Mr.
Justice Whittaker made it crystal-clear that the Court
was holding that with respect to combination patents like
the one here,
“No element, not itself separately patented, that
constitutes one of the elements of a combination pat-
ent is entitled to patent monopoly, however essential
it may be to the patented combination and no matter
how costly or difficult replacement may be.” 365
U. S., at 345.
Finally, the Court did not conclude its opinion with the
words “reversed in part and affirmed in part,” as it would
have done if like Mr . Justice Brennan it had accepted
Convertible’s asserted distinction. The order in the
opinion by Mr. Justice Whittaker was simply, “Reversed,”
which meant “Reversed,” not “reversed in part and
affirmed in part.”
If all this could have left any doubt that the Court
reversed the judgment of the Court of Appeals in its en-
tirety rather than in part only, that doubt would certainly
have been removed by the action taken on Convertible’s
petition for rehearing or alternative motion for amend-
ment or clarification of the Court’s judgment. This
motion specifically pointed out the alleged distinction be-
tween Convertible’s rights with respect to Aro’s replace-
p. 521ment fabrics for the two kinds of cars. The Court denied
the motion and the petition for rehearing,
365 U. S. 890,
and in so doing rejected precisely the same argument5
which today’s Court is now accepting. Since the motion
and petition for rehearing were rejected, five Justices must
have found Convertible’s arguments without merit. At
that time, April 17, 1961, Mr. Justice Whittaker was still
a member of the Court. It can be assumed that there
were four votes for rehearing—those of Mr . Justice
Brennan , who had not joined the Court’s judgment with
reference to the fabric replacements for Ford cars, and of
Mr . Just ice Harla n , Mr. Justice Frankfurter, and Mr .
Justice Stew art , who had dissented from the Court’s
opinion in its entirety. Four votes could not grant the
motion or the petition for rehearing, but five votes—those
of Mr . Justic e Harlan , Mr . Justi ce Brennan , Mr .
Justic e Stewart , Mr . Justic e White , and Mr . Justice
Goldbe rg —now reverse the earlier rulings of this Court.
This is, of course, permissible, but there is no reason why
today’s action in departing from the prior holding should
also be pointed to as, in the words the Court of Appeals
used to describe our previous opinion, a “puzzling ques-
tion.” Compare Legal Tender Cases,
12 Wall. 457, over-
ruling
Hepburn v. Griswold, 8 Wall. 603. As to the
merits of today’s departure from our prior holding, I
think that the old majority was right and the new major-
ity is wrong, for all of the reasons set out in Mr. Justice
Whittaker’s opinion for the Court and in my concurring
opinion,
365 U. S., at 346.
II
p. 522The Court now holds that although the fabric used on
these car tops was unpatented and clearly unpatentable,
the combination-patentee nevertheless is free to expand
its monopoly beyond the patent’s boundaries through pre-
venting the sales of that single element, the unpatented
fabric. The new majority relies largely on 35 U. S. C.
§ 271 (c), as did Mr . Justice Harlan , Mr. Justice
Frankfurter, Mr . Justice Stewar t and Mr . Justic e
Brennan the first time this case was here. As I said, I
am satisfied with the answers given to the new majority’s
interpretation of § 271 (c) by what was said in Mr. Jus-
tice Whittaker’s opinion for the Court and in my con-
currence. But since the new majority is now giving Con-
vertible a legal monopoly over the unpatented fabric
cover, I find it necessary to reach the constitutional
question urged by Aro.
Article I, § 8 of the Constitution gives Congress the
power to “promote the Progress of Science and useful
Arts, by securing for limited Times to Authors and In-
ventors the exclusive Right to their respective Writings
and Discoveries.” The granting of patent monopolies
under this constitutional authority represents a very
minor exception to the Nation’s traditional policy of a
competitive business economy, such as is safeguarded by
the antitrust laws. When articles are not patentable and
therefore are in the public domain, as these fabric covers
were, to grant them a legally protected monopoly offends
the constitutional plan of a competitive economy free
from patent monopolies except where there are patentable
“Discoveries.” And the grant of a patent monopoly to
the fabrics can no more be justified constitutionally by
calling their sale by competitors “contributory infringe-
ment” than by giving it any other label. Cf. Compco
Corp. v. Day-Brite Lighting, Inc., 376 U. S. 234; Sears,
Roebuck & Co. v. Stiffel Co., 376 U. S. 225.
III
p. 523The Court holds, quite properly I think, that a pat-
entee can get only one recovery for one infringement, no
matter how many different persons take part in the in-
fringement. In this case Ford, allegedly a direct infringer
of the Convertible patent, made a settlement with Con-
vertible for all past infringements in making its cars and
obtained a license to use the patent in the future. The
Court holds that while there can be only one recovery
for the alleged infringement which Ford turned loose
on the trade, Convertible should nevertheless have an
opportunity to try to prove, if it can, that it settled
with Ford for less than the full amount of its damages.
This, I think, brings about an unjust result which the
patent law does not compel. Here Ford, the principal
infringer, obtained a complete release from all damages
for its infringement, and I would hold that innocent pur-
chasers of Ford cars containing the infringing devices are
entitled to be released just as Ford has been. There
is considerable merit and fairness in the idea that com-
pletely releasing from liability one of several persons, all
of whom are obligated to another, releases them all.
This is particularly so in the area of patent law, where
the doctrine of contributory infringement is rested on the
belief that a direct infringer may sometimes be collection-
proof, and that in such a situation the patentee should be
given a chance to collect its damages from a more solvent
company which knowingly aided the infringement. The
original infringement, if there was infringement here,6
was Ford’s. Fairness would require that if recovery can
be had from the chief wrongdoer, here Ford, the first obli-
gation of the injured person is to try to hold Ford com-
IV
p. 524pletely responsible. This should be particularly true in
instances like this, where one company infringes a patent
and sells goods which enter into the channels of trade
throughout the Nation, thereby subjecting an untold
number of innocent dealers, future purchasers, and even
repairmen to damages. The statutory right to sue for
infringement—involving treble damages, punitive dam-
ages, attorney’s fees, etc.—should not be construed in a
way that permits unnecessary harassment of people who
have bought their goods in the open market place. I can
think of nothing much more unfair than to visit the
infringement sins of a large manufacturer upon the
thousands of ultimate purchasers who buy or use its
goods.
For the foregoing reasons I believe that Aro should
not be held liable for any damages at all and that the Dis-
trict Court should be ordered to dismiss the case. A
majority of the Court, however, remands the case for de-
termination of whether and to what extent Aro is liable
for damages. Whether Aro is liable for any damages at
all depends on whether it and the persons to whose in-
fringement Aro is alleged to have contributed can be held
liable for damages even though they may have had no
knowledge that a patent covered the top or that their
conduct infringed or helped to infringe that patent. I
would hold that unless there was such knowledge, there
can be no infringement or contributory infringement.
Section 271 (c), the section dealing with contributory
infringers (which Aro is alleged to be), provides that who-
ever sells a component of a patented combination “con-
stituting a material part of the invention, knowing the
same to be especially made or especially adapted for use
in an infringement of such patent . . . shall be liable as
p. 525a contributory infringer.” 7 Usually the word “knowing”
means “knowing,” and I am unwilling to say that in
§
271 (c) it means “unknowing.” This statute to me
means rather plainly that in order to violate it, one
who sells an article must know that the article is to be
used “in an infringement of such patent” and that it is
“especially made or especially adapted” for that purpose.
Furthermore, the legislative history of the statute con-
firms this interpretation.
As originally drafted §
271 (c) provided:
“Whoever knowingly sells a component of a pat-
ented . . . combination . . . , especially made or
especially adapted for use in an infringement of
such patent . . . shall be liable as a contributory
infringer.” 8
Several times the House Committee considering the bill
was told that because of the position of the word “know-
ingly” in the section it was not clear exactly how much a
person had to be shown to have known before he could
be held liable as a contributory infringer.9 Some wit-
nesses expressed fear that the section might be construed
to mean that a person could be held liable for selling an
article even though he did not know that it was adapted
for use in a patented device and that it would be used in
an infringement.10 On the other hand, advocates of a
7 (Emphasis supplied.)
p. 526broad liability for contributory infringement said that
there should be required only knowledge that an article
was to be used in a particular device—that a person
would be liable as a contributory infringer even if he did
not know of the existence of any patent and of any likely
infringement.11 After hearing both sides the House
Committee changed the language of the bill to read, as
§ 271 (c) now provides:
“Whoever sells a component of a patented . . . com-
bination . . . , knowing the same to be especially
infringers, you can see it would be impossible for us to know in all
cases whether we infringed or not. . . .
“ 'Knowingly sells’ will thus become highly controversial, and it will
be construed by various patent lawyers to meet their particular
situation.” Id., at 141-142.
When a witness from the Antitrust Division of the Justice Depart-
ment raised the same objection, the following exchange took place:
''[Congressman] Bryso n . It seems to me that if he sells it at
all he knows he sells it.
“Mr. Fu g a te [of the Justice Department]. He knows he sells
it; but, as in this case that I mentioned, the cutter of the metal
plate according to a special pattern didn’t know that that was to be
used in an infringing manner, that it was to be used in a patented
combination.
“[Congressman] Rog ers. Inasmuch as you recognize that the
law still gives a cause of action against the contributor who helps
infringe, would there be any objection on the part of the Justice
Department to clarify that law in definite words so that there would
not be the confusion that the gentlemen have testified to?” Id., at
164-165.
p. 527made or especially adapted for use in an infringement
of such patent . . . shall be liable as a contributory
infringer.” 12
Both the House and Senate reports explained that
“This latter paragraph is much more restricted
than many proponents of contributory infringement
believe should be the case. The sale of a component
of a patented machine, etc., must constitute a mate-
rial part of the invention and must be known to be
especially made or especially adapted for use in
the infringement before there can be contributory
infringement . . . .”13
The House Committee thus attempted to make clear that
innocent persons, who acted without any knowledge that
the goods they sold were adapted for use in the infringe-
ment of a patent which they knew about, could not be
held liable as contributory infringers. It is hard to be-
lieve that Congress intended to hold persons liable for
acts which they had no reason to suspect were unlawful,
and as I have pointed out the legislative history shows
Congress did not. Therefore I am wholly unwilling to
construe the section as meaning that one who sells an
unpatented and unpatentable piece of fabric to be used
to repair an automobile top can be held liable for treble
damages as a contributory infringer even though he had
absolutely no knowledge that there was a patent on the
top and that the top had been sold without a license, and
could not, because of this lack of knowledge, have sold the
top “knowing the same to be especially made or especially
adapted for use in an infringement of such patent.”
Furthermore, to justify its result the Court today in
defining “contributory infringement” expands the cover-
12 (Emphasis supplied.)
p. 528age of § 271 (a), which deals with “direct infringement,”
so as to make every consumer or repairman who inno-
cently buys or repairs an unmarked article which infringes
a patent liable for damages as a direct infringer. In order
for there to be contributory infringement, the Court ad-
mits, there must be a direct infringement which the
alleged contributory infringer has aided. Here Ford was
a direct infringer, but Aro sold nothing to Ford. And so,
in order to find a direct infringer who used Aro fabrics,
and thereby justify its result, the Court says that any
individual who buys a product such as an automobile
from an infringing manufacturer and devotes it to his
personal use is without more liable as a direct infringer of
the patent under § 271 (a)—even though he did not know
that the manufacturer of the product had infringed some
patent, indeed, even though he perhaps did not know
what a patent is.
The Court’s interpretation of § 271 (a) concerning the
lack of necessity for knowledge before a person can
be mulcted in damages for direct infringement is strangely
inconsistent with another provision of the patent code,
35 U. S. C. § 287,14 which states in unequivocal, easily
understood language that “no damages shall be recovered
by the patentee in any action for infringement, except
p. 529on proof that the infringer was notified of the infringe-
ment and continued to infringe thereafter.” Yet the
Court here is holding, with no support in any judicial
precedent15 and certainly none in common sense or jus-
tice, that innocent consumers of patented products and
those who equally innocently do no more than repair
worn-out parts can be subjected to punitive or treble dam-
ages even though they neither knew nor suspected that
any patent forbade them to buy, use or repair those prod-
ucts. It would be one thing to require those who sell new
inventions for profit to check the records of the Patent
Office. It is quite another to hold, as the Court now does,
that every housewife, plumber, and auto repairman must
do so.
The tremendous burden that the Court’s construction
of the patent laws will put on innocent bona fide dealers in
or purchasers of unpatented products (if Congress does
not change the Court’s ruling) cannot be accurately pre-
dicted. The number of patented appliances of various
kinds in automobiles is certainly not small. Just a few of
those that have appeared in litigation in the courts are
p. 530windshield sun visors, wheel attachments, drive-shaft
bushing assemblies, automobile heaters and windshield
defrosters, steering stabilizers, shock absorbers, pistons,
steering gear checks, steering wheels, radiator shields,
clutch release thrust bearings, mountings for rear-view
mirrors, vacuum-operated gear-shift mechanisms, spark
plug and coil connectors, wire springs for upholstered seat
structures, steering gear idler arms, windshield wiper
blade assemblies, and others.16 After the Court’s opin-
ion in this case it will certainly behoove purchasers of
new or second-hand cars and repair shops which mend
those cars to hire experts, if they can find them, in order
to try to ascertain whether or not any car which they
have bought (maybe on credit from a second-hand dealer)
or are asked to repair is a booby trap waiting to subject
them to suits for infringement by reason of some one of
the car’s patented appliances, the name or existence of
which the owner of the car may not even suspect. And
automobiles are of course not the only equipment in
which ordinary purchasers use patented devices. Pur-
chasers of homes equipped with modern appliances, as
well as millions of buyers of consumer goods in general,
may soon be made unhappily aware of the broad scope of
patent monopolies as interpreted by this Court. Entre-
preneurs in the new corporate business of suing for in-
fringements (Aro claimed that Convertible was such a
corporation, set up with no other function) may soon
become as common as patents themselves.
Neither the language nor the purpose of the patent
laws requires that they be construed to bring about such
threats on so wide a scale to the free functioning of our
business economy and to purchasers of patented appli-
ances who are wholly innocent of any intention to infringe
patents. I do not believe that in construing the patent
p. 531laws we should attribute to Congress the purpose of bring-
ing about such unreasonable, absurd and wholly unjust
results. Cf. United States v. American Trucking Assns.,
Inc.,
310 U. S. 534, 542-544;
Church of the Holy Trinity
v. United States, 143 U. S. 457, 459. I cannot believe that
Congress intended to subject to damages thousands of
ultimate consumers who do not know and have no reason
to suspect that lawsuits are lurking in every patented
contrivance concealed somewhere within the hidden re-
cesses of their automobiles.
I would reverse the judgment of the Court of Appeals
and send the case back to the District Court with instruc-
tions to dismiss it.
Cases cited
-
Aro Manufacturing Co. v. Convertible Top Replacement Co.
365 U. S. 336
SCOTUS
1961-02-27
at 360, at 354, at 369, at 368, at 341-342, at 341, at 348-349, at 378, at 365-367, at 345, at 344, at 346
p. 476, p. 477, p. 479, p. 481, p. 482, p. 488, p. 492, p. 495, p. 497, p. 499, p. 510, p. 516, p. 517, p. 519, p. 520, p. 521
-
312 F. 2d 52
312 F. 2d 52
p. 478, p. 480, p. 516
-
270 F. 2d 200
270 F. 2d 200
p. 479, p. 516
-
365 U. S. 890
365 U. S. 890
p. 479, p. 516, p. 521
-
Aro Manufacturing Co. v. Convertible Top Replacement Co.
372 U. S. 958
SCOTUS
1963-04-01
p. 481
-
375 U. S. 804
375 U. S. 804
p. 482
-
Adams v. Burke
17 Wall. 453
SCOTUS
p. 484, p. 497, p. 510
-
United States v. Univis Lens Co.
316 U. S. 241
SCOTUS
1942-05-11
at 250-251
p. 484
-
Birdsell v. Shaliol
112 U. S. 485
SCOTUS
1884-12-08
at 487, at 489, at 488-489
p. 484, p. 499, p. 501, p. 503, p. 512
-
Union Tool Co. v. Wilson
259 U. S. 107
SCOTUS
1922-05-15
at 113-114
p. 484, p. 486, p. 499
-
Sanitary Refrigerator Co. v. Winters
280 U. S. 30
SCOTUS
1929-10-14
p. 484
-
General Talking Pictures Corp. v. Western Electric Co.
305 U. S. 124
SCOTUS
1938-11-21
p. 484
-
161 F. 748
161 F. 748
p. 485
-
165 F. 440
165 F. 440
p. 485
-
71 F. 2d 628
71 F. 2d 628
p. 485
-
Teal Motor Co. v. Orient Insurance
293 U. S. 622
SCOTUS
1934-12-10
p. 485
-
80 F. 712
80 F. 712
at 723
p. 487
-
38 F. 2d 721
38 F. 2d 721
p. 487
-
Associated Bill Posters v. Wm. H. Rankin Co.
282 U. S. 864
SCOTUS
1930-10-13
p. 487
-
12 F. 2d 207
12 F. 2d 207
p. 487
-
77 F. 739
77 F. 739
p. 487
-
166 U. S. 720
166 U. S. 720
p. 487
-
182 F. 626
182 F. 626
p. 487
-
Mercoid Corp. v. Mid-Continent Investment Co.
320 U. S. 661
SCOTUS
1944-01-03
at 664, at 668, at 669, at 666-
667
p. 489, p. 491, p. 492, p. 497, p. 508
-
242 F. 2d 364
242 F. 2d 364
at 175, at 160
p. 489, p. 490
-
United States v. Berdan Fire-Arms Manufacturing Co.
156 U. S. 552
SCOTUS
1895-03-04
p. 490
-
Sontag Chain Stores Co. v. National Nut Co.
310 U. S. 281
SCOTUS
1940-05-20
p. 490
-
Boyden v. Burke
14 How. 575
SCOTUS
p. 490
-
Wine Railway Appliance Co. v. Enterprise Railway Equipment Co.
297 U. S. 387
SCOTUS
1936-03-02
p. 490, p. 514
-
Mercoid Corp. v. Minneapolis-Honeywell Regulator Co.
320 U. S. 680
SCOTUS
1944-01-03
p. 491
-
Leeds & Catlin Co. v. Victor Talking Machine Co.
213 U. S. 325
SCOTUS
1909-04-19
p. 497
-
Carbice Corp. of America v. American Patents Development Corp.
283 U. S. 27
SCOTUS
1931-03-09
p. 497, p. 506
-
United States v. Loew's Inc.
371 U. S. 38
SCOTUS
1962-11-05
p. 497
-
69 F. 2d 742
69 F. 2d 742
p. 501
-
293 U. S. 529
293 U. S. 529
p. 501
-
34 F. 2d 50
34 F. 2d 50
p. 503, p. 507
-
Duplate Corp. v. Triplex Safety Glass Co.
298 U. S. 448
SCOTUS
1936-05-18
p. 505
-
179 F. 2d 401
179 F. 2d 401
p. 506
-
339 U. S. 958
339 U. S. 958
p. 506
-
251 F. 2d 469
251 F. 2d 469
p. 506, p. 507
-
119 F. Supp. 541
119 F. Supp. 541
p. 506
-
Coupe v. Royer
155 U. S. 565
SCOTUS
1895-01-07
p. 507
-
Yale Lock Manufacturing Co. v. Sargent
117 U. S. 536
SCOTUS
1886-04-05
p. 507
-
Motion Picture Patents Co. v. Universal Film Manufacturing Co.
243 U. S. 502
SCOTUS
1917-04-09
p. 508
-
63 F. 2d 479
63 F. 2d 479
p. 512
-
325 F. 2d 328
325 F. 2d 328
p. 512
-
Knox v. Lee
12 Wall. 457
SCOTUS
p. 521
-
Hepburn v. Griswold
8 Wall. 603
SCOTUS
p. 521
-
Compco Corp. v. Day-Brite Lighting, Inc.
376 U. S. 234
SCOTUS
1964-03-09
p. 522
-
Sears, Roebuck & Co. v. Stiffel Co.
376 U. S. 225
SCOTUS
1964-03-09
p. 522
-
United States v. American Trucking Associations
310 U. S. 534
SCOTUS
1940-05-27
p. 531
-
Church of the Holy Trinity v. United States
143 U. S. 457
SCOTUS
1892-02-29
p. 531
Statutes and regulations cited
-
-
§ 284
p. 478, p. 504, p. 505
-
§ 271(c)
p. 481, p. 482, p. 483, p. 485, p. 487, p. 488, p. 491, p. 493, p. 511, p. 514, p. 516, p. 519, p. 522, p. 524, p. 525, p. 526
-
§ 271(a)
p. 483, p. 484, p. 490, p. 498, p. 514, p. 528
-
§ 271
p. 486, p. 490, p. 492
-
§ 287
p. 528
-
§ 14
p. 528
-